Strode, Maureen E. et al.

Patent Trials and Appeals Board

Dec 8, 2020

2019005093 (P.T.A.B. Dec. 8, 2020)

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.
13/308,456 11/30/2011 Maureen E. Strode 05220.0919(P872) 2974
14400 7590 12/08/2020
LOWENSTEIN SANDLER LLP / Red Hat
Patent Docket Administrator
One Lowenstein Drive
Roseland, NJ 07068
EXAMINER
NGUYEN, LE V
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
12/08/2020 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):
patents@lowenstein.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MAUREEN E. STRODE and
BRIAN M. STEVENS
________________

Appeal 2019-005093
Application 13/308,456
Technology Center 2100
________________

Before JASON V. MORGAN, JON M. JURGOVAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–30. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Red Hat Inc. Appeal Br. 4.
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SUMMARY OF THE DISCLOSURE
Appellant’s claimed subject matter relates to identifying applications
generating sound and displaying sound indicators if at least one sound
related criterion is satisfied. Abstract.
EXEMPLARY CLAIM
(Disputed Limitations Emphasized and Bracketing Added)
1. A method comprising:
monitoring a plurality of applications executing on a computing
system;
identifying, by a processing device, a first application among
the plurality of applications requesting access to a sound
generating device to generate a first sound;
responsive to identifying the first application, [1] determining,
by the processing device, whether a determined number of
sound-related criteria are satisfied, wherein the sound-related
criteria comprise a first sound-related criterion that indicates
that the first sound to be generated by the first application
meets a threshold volume level with respect to a second sound
associated with a second application, and wherein the sound-
related criteria comprise a second sound-related criterion that
determines whether a user is accessing sound related controls;
responsive to determining that the determined number of
sound-related criteria are satisfied, displaying a first sound
indicator in a user interface in association with a first visual
representation of the first application, the first sound indicator
indicating that the first application is generating sound, the first
sound indicator allowing for control of the first sound generated
by the first application; and
responsive to determining that the second application is
generating sound, displaying a second sound indicator in the
user interface in association with a second visual representation
of the second application to allow for control of the second
sound.
Appeal Br. 16 (Claims Appendix).
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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Ma et al. (“Ma”) US 2004/0201608 A1 Oct. 14, 2004
Schechter et al.
(“Schechter”)
US 2006/0242602 A1 Oct. 26, 2006
Champion et al.
(“Champion”)
US 2007/0244586 A1 Oct. 18, 2007
Liu et al. (“Liu”) US 2011/0113337 A1 May 12, 2011
REJECTIONS
The Examiner rejects claims 1–7, 9–17, 19–27, 29, and 30 under 35
U.S.C. § 103(a) as obvious over Champion, Ma, and Liu. Final Act. 2–11.
The Examiner rejects claims 8, 18, and 28 under 35 U.S.C. § 103(a) as
obvious over Champion, Ma, Liu, and Schechter. Final Act. 12.
ANALYSIS
In rejecting claim 1 as obvious, the Examiner finds that Champion
part of recitation [1]: “determining whether a sound-related criterion is
satisfied.” Final Act. 2 (citing Champion ¶ 16). The Examiner relies on Ma
for the rest of recitation [1]: “the sound-related criteria comprising a first
sound-related criterion that indicates that a first sound to be generated by a
first window meets a threshold volume level with respect to a second sound
associated with a second window.” Id. at 3–4 (citing Ma ¶¶ 12, 158, 18, Fig.
1).
Appellant argues the Examiner erred because “Ma merely concerns
displaying windows of different priorities,” which “does not teach or suggest
‘a first sound-related criterion that indicates that the first sound to be
generated by the first application meets a threshold volume level with
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respect to a second sound associated with a second application.’” Appeal Br.
10–11; Reply Br. 6.
We agree with Appellant the Examiner erred. The cited portions of
Ma teaches that multiple video windows can be assigned activity priorities
such that, for example, an active video window has the highest priority while
nonactive video windows have lower priorities. Ma ¶ 12. A user can assign
control characteristics to the windows based on the assigned priorities,
including a volume level. Id. ¶ 15. Thus, for example, a nonactive video
window can be assigned a lower volume than, and possibly dependent on,
the volume of an active video window. Id. ¶ 18. “For example, if active
volume control 151 is set to 50 percent, the volume associated with
nonactive video windows 130 and 135 can be automatically set to 25 percent
when the dependent volume, such as the volume of the active video window
120, is set to 50 percent volume.” Id. This is the audible analogue to making
nonactive videos more transparent while leaving the active window opaque.
See id. Fig. 1.
Ma does not teach or suggest modifying Champion to include a
determination that includes an indication that a first sound to be generated
by a first application meets a threshold volume level with respect to a second
sound associated with a second application. Rather Ma teaches setting the
volume level for a first application as a function of the volume level for a
second application. This setting is based on the activity priority of the first
application, not on whether a first sound to be generated by the first
application meets a threshold volume level with respect to a second sound
associated with the second application. Therefore, the Examiner’s findings
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do not show that the combination of Champion and Ma teaches or suggests
disputed recitation [1].
The Examiner does not show that Liu or Schechter cure the noted
deficiency of Champion and Ma. Therefore, we do not sustain the
Examiner’s obviousness rejection under 35 U.S.C. § 103(a) of claim 1, and
claims 2–30, which contain similar recitations.
NEW GROUNDS OF REJECTION
Although we reverse the Examiner’s obviousness rejections, we enter
a new ground of rejection under 35 U.S.C. § 112, first paragraph, of claims
1–30 for lack of written description support in the Specification.
Specifically, we are unable to find written description support for recitation
[1]: “determining . . . whether a determined number of sound-related criteria
are satisfied, wherein the sound-related criteria comprise a first sound-
related criterion that indicates that the first sound to be generated by the first
application meets a threshold volume level with respect to a second sound
associated with a second application.” Independent claims 11 and 21 have
similar recitations.
With respect to recitation [1], Appellant points to the Specification’s
paragraphs 34 through 36, and Figure 3, block 316, in the summary of the
claimed subject matter. Appeal Br. 4–5. But Figure 3 merely discloses
determining if at least one sound related criterion is satisfied without
detailing any particular criterion. And paragraphs 34 through 36 give
examples such as determining “if the volume level of the computing system
is not on mute” (Spec. ¶ 34), determining “if user input for sound related
controls is received” (id.), and determining “if a user input (e.g., one or more
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keystrokes and/or mouse clicks) is received” (id.). The Specification also
discloses, for example, using “a sound driver . . . associated with the sound
generating device . . . to identify the applications which are generating
sound.” Id. ¶ 35. But none of these disclosures relate to an indication “that
the first sound to be generated by the first application meets a threshold
volume level with respect to a second sound associated with a second
application.” At most, these disclosures relate to determining that sound is or
is not being generated by an application (e.g., whether the system is muted
or whether the application is accessing the sound driver). No determination
relating one sound volume level of a first application to a second sound
volume level (i.e., a threshold volume level) of a second application is
evident in the cited portions of the Specification. Nor, having reviewed the
rest of the Specification, are we able to discern any other disclosure that
provides written description support the first sound-related criterion of
recitation [1].
Accordingly, we newly reject claim 1, and claims 2–30 which have
similar recitations, under 35 U.S.C. § 112, first paragraph, for failing to have
written description support in the Specification.
In the event of further prosecution, we recommend the Examiner also
ascertain whether the invention of claim 1 meets the enablement requirement
of 35 U.S.C. § 112, first paragraph. See In re Wands, 858 F.2d 731 (Fed. Cir.
1988). Several factors, such as lack of direction, guidance, or working
examples, weigh against the invention of claim 1 being enabled. But other
factors, such as the state of the prior art and the relative skill of those in the
art, are best considered by the Examiner first given the lack of evidence of
record regarding disputed recitation [1].
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CONCLUSION
Claims
Rejected
35
U.S.C. §
References/
Basis Affirmed Reversed
New
Grounds
1–7, 9–17,
19–27,
29, 30
103(a) Champion,
Ma, Liu
1–7, 9–17,
19–27,
29, 30

8, 18, 28 103(a) Champion,
Ma, Liu,
Schechter
8, 18, 28
1–30 112, first
paragraph
Written
Description
1–30
Overall
Outcome
1–30 1–30
TIME PERIOD FOR RESPONSE
No time period for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. . . .
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED
37 C.F.R. § 41.50(b)