Sumeet Gupta et al.

Patent Trials and Appeals Board

Dec 31, 2019

14152443 - (D) (P.T.A.B. Dec. 31, 2019)

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.
14/152,443 01/10/2014 Sumeet Gupta 20030.628 1038
119741 7590 12/31/2019
Keller Jolley Preece / Adobe
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
EXAMINER
CADORNA, CHRISTOPHER PALACA
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUMEET GUPTA and MILI SHARMA
____________

Appeal 2019-000666
Application 14/152,443
Technology Center 2400
____________

Before BRADLEY W. BAUMEISTER, BARBARA A. BENOIT,
and MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Office
Action rejecting all of the pending claims, viz., claims 1, 2, 4–9, 11–15, and
17–23.2 See Final Act. 13 and App. Br. 27–33 (Claims App’x). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Adobe Systems Incorporated as the real party in
interest. App. Br. 1.
2 We refer herein to the Specification (“Spec.”) and Drawing Figures
(“Figs.”) filed January 10, 2014, the Final Office Action (“Final Act.”)
mailed December 26, 2017, the Appeal Brief (“App. Br.”) filed June 20,
2018, the Answer (“Ans.”) mailed September 7, 2018, and the Reply Brief
(“Reply Br.”) filed November 1, 2018.
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Introduction
Appellant describes that “[e]mbodiments of the present invention
generally relate to web conferencing and, more particularly, to a method and
apparatus for managing activities in a web conference.” Spec. ¶ 1.
Claim 1 is representative:
1. A computer implemented method comprising:
[1] determining, by at least one processor and prior to
initiating a web conference comprising a plurality of
participants, a pre-defined interactive conference activity
corresponding to a user-provided segmentation rule for
segmenting participants into groups in response to participant
interactions with the pre-defined interactive conference activity
during the web conference;
[2] upon initiating the web conference comprising the
plurality of participants associated with a plurality of
participant devices, providing the pre-defined interactive
conference activity to each participant device of the plurality of
participant devices via a computer network;
[3] detecting, via each participant device, an interaction
with the pre-defined interactive conference activity;
[4] applying the user-provided segmentation rule to the
interaction with the pre-defined interactive conference activity
detected via each participant device to generate a plurality of
groups within the web conference from plurality of participants;
and
[5] providing a first conference activity to participant
devices in a first group of the plurality of groups and a second
conference activity to participant devices in a second group of
the plurality of groups, wherein the first conference activity is
different from the second conference activity.

3 We note the Examiner’s lists of pending and rejected claims on the Office
Action Summary are incorrect. We treat this error as harmless, and address
the Claim Rejections as set forth on pages 4–15.
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App. Br. 27 (Claims App’x) (bracketed reference numbers added).
Cited Prior Art
Name Reference Date
Haveliwala
Clavel et al.
Colby et al.
US 2007/0300165 A1
US 2014/0173467 A1
US 2015/0236866 A1
Dec. 27, 2007
June 19, 2014
Aug. 20, 2015
Rejections
The Examiner rejected claims 1, 2, 4–9, 11–15, and 17–23 under
35 U.S.C. § 101 as directed to an abstract idea, without reciting significantly
more. Final Act. 4–6.4
The Examiner rejected claims 1, 2, 5–9, 13–15, and 18–23 under
35 U.S.C. § 103 as unpatentable over Colby and Haveliwala. Id. at 6–13.
The Examiner rejected claims 4, 11, 12, and 17 under § 103 as
unpatentable over Colby, Haveliwala, and Clavel. Id. at 13–15.

4 The Final Office Action omits dependent claims 4, 11, 12, and 17 from the
list of claims rejected under § 101. This is a harmless ministerial error.
Those claims stood rejected in the previous (non-final) office action mailed
May 17, 2017, they were discussed as standing rejected in Final Office
Action’s Response to Arguments, and the Examiner’s Answer (p. 3)
correctly identifies them as standing rejected under § 101. We also note
Appellant wrongly identifies which claims stand rejected under § 101 in the
Appeal Brief (see p. 9 (identifying claims 1–6, 8–23, and 25–34)) and
otherwise treats all pending claims as standing rejected under § 101 in the
Appeal Brief and Reply Brief.
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ANALYSIS
A. The § 101 Rejection
1. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see also id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
After the docketing of this Appeal, the PTO published revised
guidance on the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“Guidance”);
USPTO October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019).
Under the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).5
See Guidance, 84 Fed. Reg. at 52, 55–56.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the office then look
to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
2. Analysis
For the § 101 rejection, Appellant argues claims 1, 2, 5–9, 13–15, and
18–23 together as a group. App. Br. 10–20. We select claim 1 as
representative. 37 C.F.R. § 41.37(c)(1)(iv). We are not persuaded the

5 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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Examiner erred in the § 101 rejection. As consistent with our discussion
below, which primarily is for emphasis and clarification with respect to the
Guidance, we adopt the Examiner’s eligibility findings and conclusions as
our own.
(i) Guidance Step 2A, Prong One
For our prong-one analysis, we put aside the limitations: (1) of
“computer implemented,” (2) that the recited “conference” is a “web
conference,” (3) for performing the first step “by at least one processor,” and
(4) for interacting with participant “devices” (that are reached “via a
computer network”) (i.e., for the second and fifth “providing” steps, we
consider the functionality of interacting with participants rather than with
participant devices). We consider these limitations (individually and in
combination) in our prong two and Alice/Mayo step two (Guidance step 2B)
analyses below. Setting aside those limitations, claim 1 recites:
[1] determining . . . prior to initiating a [] conference
comprising a plurality of participants, a pre-defined interactive
conference activity corresponding to a user-provided
segmentation rule for segmenting participants into groups in
response to participant interactions with the pre-defined
interactive conference activity during the [] conference;
[2] upon initiating the [] conference comprising the
plurality of participant[s ], providing the pre-defined interactive
conference activity to each participant . . .;
[3] detecting, via each participant [], an interaction with
the pre-defined interactive conference activity;
[4] applying the user-provided segmentation rule to the
interaction with the pre-defined interactive conference activity
detected via each participant [] to generate a plurality of groups
within the [] conference from plurality of participants; and
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[5] providing a first conference activity to participant[s]
[] in a first group of the plurality of groups and a second
conference activity to participant[s] [] in a second group of the
plurality of groups, wherein the first conference activity is
different from the second conference activity.
Collectively, the foregoing limitations of claim 1 describe (recite) the
idea of organizing and running an interactive conference, in which
participants are divided into groups for separate activities during the
conference.
The functions recited by these limitations reasonably can be
characterized as encompassing mental processes and certain methods of
organizing human activity. Using the example of a person setting up and
running an interactive presentation to a group, the first step’s requirement of
pre-establishing “a pre-defined interactive conference activity corresponding
to a user-provided segmentation rule” encompasses the presenter selecting or
creating presentation exhibits that will involve interaction between the
presenter and the participants (an “interactive conference activity”). The
requirement for the presentation to “correspond[] to a user-provided
segmentation rule for segmenting participants into groups in response to
participant interactions with the pre-defined interactive conference activity”
encompasses an interactive presentation that divides participants into groups,
such as based on answers during a Q&A session. For example, this recited
segmentation encompasses grouping participants together based on
responses that distinguish two sub-groups of participants by job category. A
person can first create a plan for conducting an interactive presentation using
only pen and paper.
The second step describes the presenter following rules or instructions
for giving the interactive presentation. This step reasonably can be
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characterized as a certain method of organizing human activity that
encompass managing interactions among people. In particular, the second
step’s recitation of providing the pre-defined interactive activity to
participants encompasses teaching and following rules or instructions. The
Guidance expressly recognizes these certain methods of organizing human
as constituting abstract ideas. Guidance, 84 Fed. Reg. 52.
The third limitation’s step of “detecting via each participant . . . , an
interaction with the conference activity” reasonably can be characterized as
the mental process of observing the participants’ interactive participation.
The Guidance expressly recognizes mental observations as constituting
abstract ideas.
The limitations in the remaining steps similarly encompass mental
processes and methods of organizing human activity. Applying a
segmentation rule to generate sub-groups based on having perceived the
interaction from each participant is a mental process (the fourth step) and
interacting separately with two participant sub-groups, such as by asking
managers to respond to one question and subordinates to respond to another,
constitutes organizing human activity (the fifth step).
Thus, each of claim 1’s steps for organizing and running an interactive
conference, in which participants are divided into sub-groups for separate
activities during the conference, recite abstract ideas that encompass mental
processes and/or certain methods of organizing human activity. As the
Guidance explains, such recitations of certain methods of organizing human
activity and/or mental processes reasonably can be characterized as abstract
ideas. See Guidance, 84 Fed. Reg. at 52, id. at nn. 13 (citing cases
explaining examples of abstract ideas in the category of certain methods of
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organizing human activity such as managing human behavior or
interactions), 14–15 (citing cases explaining examples of abstract mental
process limitations). For example, in giving the presentation as described
above, the presenter engages in “observation and evaluation,” which, as the
Guidance explains, are in the category of abstract mental processes.
Memorandum, 84 Fed. Reg. at 52. Such an interactive presentation also
includes “managing personal behavior or relationships or interactions
between people” which, as the Guidance explains, are in the category of
certain methods of organizing human activity. Id. “Adding one abstract
idea . . . to another abstract idea . . . does not render the claim non-abstract.”
RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322, 1327 (Fed. Cir.
2017); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093–94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a
combination of abstract ideas).
Accordingly, claim 1 recites a judicial exception in the form of an
abstract idea, and our analysis proceeds to prong two under the Guidance.
(ii) Guidance Step 2A, Prong Two
To determine whether the judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
practical application. Guidance, 84 Fed. Reg. at 54–55 (emphasis added);
see also MPEP § 2106.05(a)–(c), (e)–(h).
Here, the additional elements in claim 1 are that (1) the method is
“computer-implemented” (with the first step being performed “by at least
one processor”) and (2) performing the conference as a “web” conference
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using the “devices” of the participants (with the second step adding that the
interactive activity is provided to the devices “via a computer network”).
Claim 1 does not, however, recite any improvement to a computing
device, processor, network, or web technology. Instead, as the Examiner
finds, and we agree, claim 1 simply uses basic technology for carrying out
the abstract idea in a computerized environment. See Final Act. 6; Ans. 5,
7–12. Relying on a “processor” to “perform routine tasks more quickly
or more accurately is insufficient to render a claim patent eligible.” OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
We disagree with Appellant that claim 1 is patent-eligible because it is
analogous to the claims at issue in Enfish. Appeal Br. 11. The claims at
issue in Enfish were “specifically directed to a self-referential table for a
computer database,” which was “a specific improvement to the way
computers operate.” Enfish, 822 F.3d at 1336–37. Appellant’s claim 1 is
not directed to a specific improvement in how computers operate, rather it
uses routine computer technology to carry out the recited abstract idea.
Appellant’s contentions based on the claims at issue in cases such as
Amdocs,6 McRO,7 DDR Holdings,8 and various other cases are similarly
unpersuasive. See App. Br. 17–19; Reply Br. 8–13. For example, unlike
Appellant’s claim 1, the claim at issue in Amdocs had a technology focus—it
“entail[ed] an unconventional technological solution (enhancing data in a
distributed fashion) to a technological problem (massive record flows which

6 Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016).
7 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
8 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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previously required massive databases).” 841 F.3d at 1300 (determining the
claim term “to enhance” was a specific technological limitation, construed as
meaning “to apply a number of field enhancements in a distributed
fashion”).
From a technological perspective, whereas Appellant’s claim 1 recites
“computer-implemented,” “at least one processor,” “a computer network,”
and that the conference is a “web” conference that interacts with participant
“devices,” the Amdocs claims were “tied to a specific structure of various
components (network devices, gatherers, ISMs, a central event manager, a
central database, a user interface server, and terminals or clients)” such that
the components were “purposefully arrange[d] . . . in a distributed
architecture to achieve a technological solution to a technological problem
specific to computer networks.” Id. Claim 1, on the other hand, uses
generic technology components simply to automate a process that otherwise
may be performed without technology.
Similarly, the claim at issue in McRO, which “focused on a specific
asserted improvement in computer animation, i.e., the automatic use of rules
of a particular type,” also is not analogous to Appellant’s claim 1. McRO,
837 F.3d at 1314. The McRO claim “require[d] that the rules be rendered in
a specific way: as a relationship between sub-sequences of phonemes,
timing, and the weight to which each phoneme is expressed visually at a
particular timing (as represented by the morph weight set),” such that it was
directed to a technological improvement. See id. at 1315–16 (quoting id. at
15). Appellant’s claim 1 includes no such technological focus or limitations.
Thus, claim 1 is also unlike the patent-eligible claim at issue in DDR
Holdings, which recited limitations for providing a composite web page
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based on a link activation occurring at a remote computer, thereby
addressing “a challenge particular to the Internet.” DDR Holdings, 773 F.3d
at 1257–58 (“We caution, however, that not all claims purporting to address
Internet-centric challenges are eligible for patent.”).
Thus, we determine claim 1 does not improve the functioning of a
computer or any other technology or technical field, and neither does it
apply the judicial exception with any particular machine. See MPEP
§ 2106.05(a)–(b). Claim 1 also does not effect a particular transformation of
any recited articles, which are used for their ordinary purposes, nor does it
add any other meaningful (technological) limitations beyond “linking the
use” of the method to generically recited technology; thus, the technological
limitations amount to no more than instructions to implement the abstract
idea using general computer-related technology. See MPEP § 2106.05(c),
(e)–(f); see also id. at (g)–(h) (use of well-known limitations beyond the
judicially excepted matter constitutes “insignificant extra-solution activity”
(g) and claim limitations “merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more” (h)). Thus, we conclude claim 1 does not integrate the
recited judicial exception into a practical application and, accordingly,
claim 1 is “directed to” its recited judicial exception involving mental
processes and/or certain methods of organizing human activity. Guidance,
84 Fed. Reg. at 53. We, therefore, proceed to step 2B under the Guidance.
(iii) Guidance Step 2B (Alice/Mayo Step Two)
In step 2B under the Guidance, we consider whether there are
additional limitations that, individually or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
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U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As stated in the
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
been integrated into a practical application. Guidance, 84 Fed. Reg. at 56.
Thus, at this point of our analysis, we determine if claim 1 adds a specific
limitation, or combination of limitations, that is not well-understood, routine,
conventional activity in the field; or whether, in addition to the recited
judicial exception, they recite only well-understood, routine, conventional
activities at a high level of generality. Id.
Here, beyond the limitations describing the abstract idea, claim 1 does
not recite any additional limitations (or combination of limitations) that are
not well-understood, routine, and conventional. The Examiner finds, and we
agree, that the additional limitations constitute use of technology that was
well known to those of ordinary skill prior to the invention. Final Act. 5;
Ans. 8–10.
The technology recited in claim 1 is at a generic level. The
Specification describes the underlying “web conference” technology as well
known, and introduces the invention in the context of a need for using such
technology to “manage activities” and improve the “experience” for the
conference participants and host. Spec. ¶ 2; see also id. ¶¶ 54–58
(describing variations of underlying technology for implementing the
invention in a non-limiting manner). Neither Appellant’s Specification nor
the record sufficiently discusses any special functionality or considerations
for a technological aspect of any technological component recited in the
independent claims. Thus, Appellant’s contentions that claim 1 “improve[s]
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computing systems implementing online web conferences (Appeal Br. 11
(emphasis omitted)) and includes “a technical improvement to automation”
(Reply Br. 11) are unpersuasive.
We have considered and found unpersuasive Appellant’s arguments,
such as Appellant’s contention that claim 1, “as a whole presents a
technological improvement in the field of executing context-relevant actions
relative to a current state of a user.” App. Br. 6. As per our discussion
above, we discern no “technological improvement” to any field (i.e., putting
aside whether “the field of executing context-relevant actions relative to a
current state of a user” fairly characterizes the claimed invention).
We disagree that claim 1 includes an “inventive concept” similar to
the claims of BASCOM.9 See Appeal Br. 16–17. The patent at issue in
BASCOM described a particular arrangement of Internet server filtering
software that enables individually customizable filtering at a remote ISP
server by taking advantage of the technical ability of the ISP server to
identify individual accounts and associate a request for Internet content with
a specific individual account. See BASCOM, 827 F.3d at 1343–45.
The Federal Circuit recognized that BASCOM’s installation of an
Internet content filter at a particular network location is “a technical
improvement over prior art ways of filtering such content” that provided the
advantage of allowing the Internet content filter to have “both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server” and
“give[s] users the ability to customize filtering for their individual network
accounts.” BASCOM, 827 F.3d at 1350, 1352. The present record contains

9 BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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insufficient evidence to support the contention that Appellant’s claimed
system provides a similar technical solution through an unconventional
arrangement of technological components as was the case in BASCOM.
Appellant’s reliance on Berkheimer is also misplaced. See App. Br.
16–17, 20–21; Reply Br. 7, 14–16. The exemplary claim limitation at issue
in Berkheimer was “storing a reconciled object structure in the archive
without substantial redundancy,” which the court found was “directed to [an]
arguably unconventional inventive concept described in the specification.”
881 F.3d at 1370. There was no evidence in the record that this limitation
described well-understood, routine, and conventional technology. Id. at
1368. The court held there was a “genuine issue of material fact” and that
“fact questions created by the specification’s disclosure” precluded summary
judgment of invalidity under step two of the Alice/Mayo framework. Id.
Here, as discussed above, the only limitations not reciting a part of the
abstract idea are that the method is “computer implemented,” that the
conference” is “a web conference,” that the first step is performed “by at
least one processor,” and that interaction with participants is with “devices”
(“via a computer network”). The remaining limitations describe the recited
abstract idea. There is no genuine dispute of material fact as to whether the
technological aspects, which are recited at a generic level, are well-
understood, routine and conventional. See, e.g., Spec. ¶ 2. Thus, because
the record before supports the finding that, beyond the abstract idea, claim 1
recites only well-understood, routine, and conventional technology,
Berkheimer is inapposite.
(iv) § 101 Conclusion
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Accordingly, we sustain the § 101 rejection of claims 1, 2, 5–9, 13–
15, and 18–23.
B. The § 103 Rejections
In rejecting claim 1, the Examiner finds Colby teaches all limitations
except for the requirement that a “conference” is a “web conference.” Final
Act. 7–8 (citing Colby ¶¶ 197, 199, 202, 212–14, 368, Figs. 3, 8); see also
id. at 8–9 (relying on Haveliwala for teaching a “web conference” (citing
Haveliwala ¶¶ 2, 40, Fig. 4)). In particular, the Examiner finds Colby’s
disclosure of an Independent Study Module and Group Entrance
Examination used for assigning students to groups for interaction during
subsequent collaborative learning teaches the disputed limitations of
(1) “upon initiating the [] conference comprising the plurality of participants
associated with a plurality of participant devices, providing the pre-defined
interactive conference activity to each participant device of the plurality of
participant devices via a computer network,” and (2) “providing a first
conference activity to participant devices in a first group of the plurality of
groups and a second conference activity to participant devices in a second
group of the plurality of groups, wherein the first conference activity is
different from the second conference activity,” as recited. Final Act. 7–8
(citing Colby ¶¶ 212–13, Fig. 3).
Appellant contends the Examiner errs, because “setting up and
administering an entrance examination that allows a student to begin a
course of study with other students is fundamentally different than the
recited limitations.” Appeal Br. 23; see also id. at 24–25. The Examiner
responds that
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Appellant goes against the explicit language of Colby by
incorrectly referring to the group entrance examination as a
course entrance examination. As can be plainly read from
Colby ¶ 0213, the group entrance exam is to ensure a level of
understanding “to interact with other students” rather than
admittance into the course at all. Independent study is not a
being excluded from the course, but merely from the later social
challenges that are within the course.
Ans. 15; see also id. at 13–16.
Appellant replies that
one of ordinary skill in the art would not read a test that pre-
dates and precludes any interactivity with other students as
reading on an interactive conference activity provided during a
[] conference and applying user-provided segmentation rules to
interaction with the pre-defined conference activity to generate
a plurality of groups within the [] conference (as more particu-
larly recited in the claims).
Id. at 18; see also id. at 16–17.
On the record before us, Appellant’s argument is persuasive. We
agree with Appellant that the relied-upon disclosure of Colby teaches that an
individual is not a participant in a conference unless and until that individual
passes the group entrance exam. See Colby ¶¶ 212–13; Fig. 3. Accordingly,
because the disputed limitations require “providing the pre-defined
interactive conference activity to each participant” at the start of the
conference (i.e., “upon initiating” it), on the record before us, we agree the
Examiner errs by mapping the group entrance exam of Colby to claim 1’s
pre-defined conference activity.
Appeal 2019-000666
Application 14/152,443

19
Accordingly, based upon the positions taken by the Examiner and
arguments presented by Appellant,10 we do not sustain the § 103 rejection of
claim 1. For the same reason, we do not sustain the rejection of independent
claims 8 and 14, both of which include limitations that are commensurate
with the disputed limitations of claim 1 and for which the Examiner relies
upon the same disclosure from Colby. See App. Br. 29, 31; Final Act. 11.
We also, accordingly, do not sustain the § 103 rejections of the dependent
claims 2, 4–7, 9, 11–13, 15, and 17–23.
DECISION
In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 2, 4–9, 11–
15, 17–23 101
Nonstatutory
Subject Matter
1, 2, 4–9, 11–
15, 17–23
1, 2, 5–9, 18–
23 103 Colby, Haveliwala
1, 2, 5–9, 13–
15, 18–23
4, 11, 12, 17 103 Colby, Haveliwala, Clavel 4, 11, 12, 17
Overall
Outcome
1, 2, 4–9, 11–
15, 17–23

10 We note Haveliwala discloses automated assignment of conference
participants to different “breakout rooms” in the context of web conferences.
Haveliwala ¶ 63, Fig. 5. However, the Examiner did not rely on this
teaching in formulating the obviousness rejection, so we do not reach any
determinations as to whether this additional teaching overcomes the
deficiencies in the Examiner's reasoning noted above. See Ex Parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (explaining that the Board
reviews the appealed rejections for error based upon the issues identified by
Appellants, and in light of the arguments and evidence produced thereon).
In the event of further prosecution, the Examiner should consider if
Haveliwala teaches or suggests the disputed limitations.
Appeal 2019-000666
Application 14/152,443

20

TIME PERIOD FOR RESPONSE
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).
AFFIRMED