Avaya Inc.Download PDFPatent Trials and Appeals BoardOct 14, 20212021004940 (P.T.A.B. Oct. 14, 2021) Copy Citation 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. 14/945,587 11/19/2015 Michael VERNICK 4366-897-REI 6194 48500 7590 10/14/2021 SHERIDAN ROSS P.C. 1560 BROADWAY, SUITE 1200 DENVER, CO 80202 EXAMINER GE, YUZHEN ART UNIT PAPER NUMBER 3992 NOTIFICATION DATE DELIVERY MODE 10/14/2021 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): cjacquet@sheridanross.com edocket@sheridanross.com pair_Avaya@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL VERNICK Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 Technology Center 3900 Before ALLEN R. MacDONALD, ERIC B. CHEN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–20 in the reissue of U.S. Patent No. 8,970,651 B2. 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(a). Appellant identifies Avaya, Inc. as the real party in interest. Appeal Br. 2. Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 2 TECHNOLOGY The application relates to “adding video to an audio only communication session.” Spec. Abstract. ILLUSTRATIVE CLAIM Claim 1 is illustrative and reproduced below with certain disputed limitations emphasized: 1. A method comprising: establishing, via a first connection, a first communication session between a first device and a second device, wherein the first communication session, when established, is an audio only communication session and the first device is an audio only device; receiving an input to the first device to add video to the first communication session; in response to the input, establishing, via a second connection, a second communication session with a third device having video capabilities, wherein the second communication session comprises video; adding video to the first communication session further comprising, sending a message, via the second connection, to the third device requesting initialization of video input and output; after the first communication session has been established, receiving, via the first communication session, at the first device, the first communication session comprising a video portion and an audio portion; synchronizing, by the first device, the audio portion with the video portion, wherein the synchronizing further comprises determine when to send frames of the video portion to the third device; presenting the audio portion by the first device; and based on the synchronization, sending frames of the video portion to the third device for presentation. Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 3 REFERENCES The Examiner relies on the following references as prior art: Name Number Date Kim US 2012/0142324 A1 June 7, 2012 Knight US 2003/0202088 A1 Oct. 30, 2003 Park US 2007/0153762 A1 July 5, 2007 Takamine US 2004/0183896 A1 Sept. 23, 2004 Tsutsumi US 2009/0137243 A1 May 28, 2009 REJECTIONS The Examiner makes the following rejections: Claims 35 U.S.C. § Basis Final Act. 1–20 251 Improper broadening 8–9 1–20 112, 1st para. Written description 11–16 1–20 112, 2nd para. Indefiniteness 16–17 1–3, 6, 9, 11, 13, 14, 16, 18, 20 103 Knight, Takamine 17–21 4, 5, 12, 15, 19 103 Knight, Takamine, Park 22–24 7 103 Knight, Takamine, Tsutsumi 24–25 8, 10, 17 103 Knight, Takamine, Kim 25–26 ISSUES 1. Did the Examiner err in concluding that the omission of “wireless” improperly broadened reissue claim 1? 2. Did the Examiner err in finding that the Specification lacked sufficient written description for “synchronizing, by the first device, the audio portion with the video portion, wherein the synchronizing further comprises determine when to send frames of the video portion to the third device” and certain other terms in reissue claims 1, 6, and 10? Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 4 3. Did the Examiner err in concluding that “the first device is an audio only device” rendered reissue claim 1 indefinite given the other claimed requirements regarding what the first device must do with video? 4. Did the Examiner err in finding Knight teaches or suggests “the first device is an audio only device,” as recited in reissue claim 1? ANALYSIS § 251: Broadening Reissue When the ’651 patent issued, all of the independent claims recited a “wireless” connection. Specifically, claims 1, 9, and 16 recited “establishing, via a wireless connection, an audio only communication session between a first device and a second device” and “receiving, via the wireless connection, a video portion and an audio portion of the audio video communication session.” The reissue claims were amended to remove the word “wireless,” such as instead reciting “establishing, via a first connection.” On March 10, 2021—one day prior to the filing of the Appeal Brief— Appellant filed an amendment seeking, in part, to add the word “wireless” back into the claims. See, e.g., Amendment 2 (“establishing, via a first wireless connection” (emphasis omitted)); Appeal Br. 5. However, in an Advisory Action dated March 25, 2021, the Examiner declined to enter that amendment. Advisory Act. 3 (“The Mar 2021 Claim Amendment is not entered based on the following two reasons:” (1) it “is not in the correct format because it is not based on the original patented claims” and (2) “because of the claim changes, the current claim rejections under 35 U.S.C. § 103 may need additional findings of fact.”); Ans. 6–7. Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 5 Although the issues on appeal may have been simplified by either (A) the Examiner entering the amendments on this particular point or (B) Appellant seeking to amend the claims sooner, “the Board . . . does not consider the issue of whether the examiner’s refusal to enter the proposed amendment after final rejection constituted an abuse of discretion” and instead such a refusal “may be remedied by a Rule 181 petition.” In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (quotation omitted); see also 37 C.F.R. § 1.127 (“From the refusal of the primary examiner to admit an amendment, in whole or in part, a petition will lie to the Director under § 1.181.”). Therefore, based on the current claims before us, we agree with the Examiner that removing the word “wireless” improperly broadens the claims. Accordingly, we sustain the § 251 rejection of claims 1–20. § 112, first paragraph: Written Description All of the independent reissue claims (1, 9, and 16) recite “synchronizing, by the first device, the audio portion with the video portion, wherein the synchronizing further comprises determine when to send frames of the video portion to the third device.” Appellant quotes the Specification as disclosing that “the first device synchronizes the audio portion . . . and the video portion” and “the first device sends the synchronized audio and video portion of the communication session to the second device.” Appeal Br. 6 (quoting Spec. ¶ 7) (emphasis amended). Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 6 The Examiner determines that “[t]he section cited by the Appellant provides support for the first device synchronizing video from the third device . . . and sent to the second device” but “does not disclose the first device synchronizing audio and video received from the second device” and sent to the third device. Ans. 9 (emphasis amended). The Examiner is correct that these portions of the Specification quoted by Appellant entail synchronizing video sent to the second device whereas the reissue claims require synchronizing video sent to the third device. However, in the Summary of Claimed Subject Matter, Appellant also cited additional paragraphs that do discuss sending video to the third device. Appeal Br. 3 (citing Spec. ¶¶ 30, 34, 45). If the system 100 then receives video and audio frames associated with the communication session from the second device, the system 100 can check lip synchronization attributes on the video frames and, at a time that is based at least in part on the lip synchronization attributes, send the video frames to the third device to be decoded and displayed at the third device. This way, the third device can display the video frames from the second device, while the system 100 outputs corresponding audio frames from the second device, so that the video and audio frames are outputted in a synchronized manner. Spec. ¶ 45 (emphasis added). The Examiner suggests that merely checking lip synchronization parameters that were set elsewhere is not “synchronizing.” Ans. 10; cf. Spec. ¶ 45 (“To synchronize the audio and video portions of the communication session, the system 100 can set lip synchronization attributes on the video portion of the communication session with audio from the audio portion of the communication session.” (emphasis added)). However, other portions of the Specification not cited by Appellant more clearly state Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 7 that the first device (e.g., phone 204A) can synchronize video in both directions, including video sent to the third device (e.g., wireless conferencing gateway 204C and display 204B): “The phone 204A [i.e., the first device] can synchronize the video frames with audio from the audio frames and, at an appropriate time, send the video frames to the wireless conferencing gateway 204C to be decoded and displayed on the display 204B [i.e., the third device].” Spec. ¶ 28; cf. id. ¶ 27 (discussing synchronizing video in the opposite direction: “The phone 204A [i.e., the first device] can then . . . set lip synchronization attributes with audio from the user 202, and send the video frames to the remote user 206 [i.e., the user of the second device].”). Thus, despite Appellant’s arguments focusing on the wrong teachings, written description support does exist for the “synchronizing” limitation. Nevertheless, the Final Office Action also raised other claim limitations for written description that Appellant never addresses in its arguments on written description. E.g., Final Act. 14–15 (“wherein the first device is an audio only device” in claim 1), 16 (“wherein the audio portion and the video portion are both transmitted via a same network associated with the second connection” in claims 6 and 10). Arguments that Appellant reasonably could have made but did not are deemed forfeited or waived. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we summarily affirm the written description rejection of claims 1–20. Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 8 § 112, second paragraph: Indefiniteness All of the independent reissue claims (1, 9, and 16) recite that “the first device is an audio only device,” yet also recite the first device being involved in certain aspects of video, including “receiving . . . at the first device . . . a video portion” and “synchronizing, by the first device, the audio portion with the video portion, wherein the synchronizing further comprises determin[ing] when to send frames of the video portion.” The Examiner determines that the claims are indefinite because an “audio only device is a device that is not capable of processing video, including receiving and sending videos,” yet the claims “recite an audio only device that can receive, send videos and process videos.” Final Act. 16–17. Appellant argues that “[t]he Examiner’s application of a definition obtained from a prior art reference is inconsistent with the term as used in the specification and as claimed.” Appeal Br. 7. “More specifically, a device may be an ‘audio-only device’ that incorporate[s] video via a connection to a device with video capabilities.” Id. at 5 (citing Spec. ¶ 5). Thus, “Appellant submits that an ‘audio only device,’ as used herein, is a device such as an audio-only telephone that is not capable of presenting or receiving signals other than audio.” Reply Br. 2. “Such devices hav[e] a microphone and speaker, but not a camera or display.” Id. However, “Appellant submits that an ‘audio only device’ may act as a communication conduit to transport non-audio signals.” Id. We agree with the Examiner that Appellant has not adequately rebutted the indefiniteness rejection. Appellant has not identified any Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 9 support in the Specification that identifies a device as both (1) “audio only” and (2) handling video signals. The Specification only expressly uses the term “audio only” for a device in two paragraphs. First, the Specification discloses a prior art “audio-only conferencing device” in its Background section as follows: current solutions do not allow an audio-only conferencing device to automatically add video conferencing to an audio conference when the audio-only conferencing device enters the vicinity of a video conferencing device with wireless capabilities. With current solutions, if a user is on an audio-only call through a mobile phone and the user wishes to add high quality video beyond the capabilities of the mobile phone, the user must manually transfer or reestablish the entire call on another device. Spec. ¶ 3. But the prior art’s “audio-only conferencing device” was incapable of automatically adding video conferencing and nothing suggests it handled or processed any video signals. Spec. ¶ 3. And the prior art “mobile phone” discussed later in that paragraph is described as capable of making “an audio-only call” but not described as an audio-only device. Id. To the contrary, a mobile phone would be excluded from Appellant’s interpretation of “audio only device” because a mobile phone typically has a display (see Reply Br. 2) and the Specification seems to imply that the prior art mobile phone was at least capable of displaying low quality video. Spec. ¶ 3. Second, in the Summary section, the Specification mentions an “audio-only phone”: a user participating in an audio-only conference through an audio-only phone can automatically add high quality video to the conference by wirelessly connecting to a nearby device with video capabilities. Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 10 Spec. ¶ 5. But this “audio-only phone” is never disclosed as processing any video signals. The more specific embodiments in the Specification’s Detailed Description and the drawings also do not support Appellant’s arguments. For example, mobile phone 302 in Figure 3 and desktop phone 402 in Figure 4 are depicted as having their own built-in displays, which again would exclude them from being an “audio only device” under Appellant’s interpretation. See Reply Br. 2. The same is true in the more general block diagram of “an example system embodiment” in Figure 1, where “computing device 100,” which can be “a small, handheld computing device, a desktop computer, or a computer server,” includes “the necessary hardware components, such as . . . display 170.” Spec. ¶ 19. And although phone 204A in Figure 2 is described as handling and processing video signals, Appellant has not pointed us to anything that clearly states phone 204A is an “audio only” device. Thus, none of the devices discussed in the Specification are clearly identified as both (1) being an “audio only device” and (2) processing video signals. Elsewhere, the Specification discusses “an audio only communication session.” Spec. ¶¶ 6, 41. However, the claims separately require “the first communication session, when established, is an audio only communication session.” Thus, an “audio only device” must mean something other than merely an “audio only communication session.” Appellant’s arguments also are internally inconsistent and conflict with the claims. For example, “Appellant submits that an ‘audio only device,’ as used herein, is a device such as an audio-only telephone that is Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 11 not capable of presenting or receiving signals other than audio.” Reply Br. 2. Thus, Appellant argues an audio-only device “is not capable of . . . receiving signals other than audio” (e.g., video), yet reissue claim 1 requires “receiving, . . . at the first device, the first communication session comprising a video portion.” Appellant’s inconsistency—requiring a device that is not capable of receiving video yet also must receive video— underscores the indefiniteness of the claim. Similarly, as noted above, Appellant asserts that an audio only device lacks a display, yet elsewhere cites mobile phones for support when the ’651 patent clearly depicts mobile phones as having a built-in display. Reply Br. 2 (“Such devices hav[e] a microphone and speaker, but not a camera or display.”), 3 (quoting Spec. ¶ 3 for its “mobile phone”), 10 (citing Fig. 3, which depicts mobile phone 302). Again, even Appellant is not consistent about what qualifies as an “audio only device.” Appellant’s attempted analogy to a network router also falls flat. Reply Br. 10. Appellant calling a network router a “connection-only” device appears to be terminology artificially created by Appellant, but even if considered, it lacks the audio/video mutual exclusivity implied by “audio only” and highlights that network routers typically do not do the type of detailed processing of video signals expressly required by claim 1 (e.g., “synchronizing . . . the video portion”). Given the plain claim language, the lack of discussion in the Specification, and Appellant’s inconsistent explanations, Appellant has not persuaded us that the Examiner erred in determining a person of ordinary skill in the art would not have been reasonably certain whether or how a Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 12 device could be “audio only” yet perform the video processing required by the claims. Accordingly, we sustain the Examiner’s indefiniteness rejection of claims 1–20.2 § 103: Obviousness All of the independent reissue claims (1, 9, and 16) recite “the first device is an audio only device.” The Examiner relies on Knight for teaching or suggesting this limitation. In particular, the Examiner finds that in Knight, “the phone 102 together with the computer 106 that is responsible for setting up communication, is interpreted as the ‘first device.’” Ans. 16. Slightly more narrowly, the Examiner previously found that “102 with the component in 106 responsible for setting up communication with the second device without the display in Fig. 1 is interpreted as an audio only device and it is the first device.” Final Act. 17 (emphasis added). 2 In the event of further prosecution, Appellant and the Examiner also may wish to consider whether the limitation “receiving, via the first communication session, at the first device, the first communication session comprising a video portion and an audio portion” further renders reissue claim 1 indefinite. It may not have been reasonably clear to a person of ordinary skill whether the underlined instance of “the first communication session” is the direct object of “receiving” and if so, how “the first communication session” can be received “via the first communication session” (i.e., how a session can be received via itself). For comparison, issued claim 1 recited “receiving, via the wireless connection, a video portion and an audio portion of the audio video communication session.” Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 13 Figure 1 of Knight depicts 106 as a “Computer” with a monitor. For example, Knight discloses that its system “causes physician computer 106[’s] browser to display a screen including a ‘Start Video’ button which may be used to start the videoconference.” Knight ¶ 50; see also id. ¶ 67 (“to select the ‘Start Video’ button displayed on physician computer 106”; “The physician selects the ‘Start Video’ button displayed in the browser on physician computer 106”). The combination of phone 102 and computer 106 (whether in its entirety or omitting the monitor) does not teach or suggest an “audio only device” because Knight expressly discloses using computer 106 for its display and videoconferencing capabilities, not just audio. Although the exact contours of an “audio only device” may be indefinite for the reasons discussed above, a computer with a video card and programming to display images via that video card certainly is not an “audio only device.” Accordingly, we do not sustain the Examiner’s § 103 rejection of claims 1–20. Objections Appellant also asks for reconsideration of certain claim objections based on an amendment. Appeal Br. 6. The Examiner states that “[c]laim objections are not appealable.” Ans. 7. Appellant replies that “exceptions exist, as provided in MPEP §1201,” including when the objection is determinative of the rejection. Reply Br. 5–6. However, even with this new argument, Appellant does not adequately explain what rejection would be impacted by resolving the objection. Thus, we need not resolve any objections here. Appeal 2021-004940 Application 14/945,587 Patent 8,970,651 B2 14 OUTCOME The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 251 Improper broadening 1–20 1–20 112 Written description 1–20 1–20 112 Indefiniteness 1–20 1–3, 6, 9, 11, 13, 14, 16, 18, 20 103 Knight, Takamine 1–3, 6, 9, 11, 13, 14, 16, 18, 20 4, 5, 12, 15, 19 103 Knight, Takamine, Park 4, 5, 12, 15, 19 7 103 Knight, Takamine, Tsutsumi 7 8, 10, 17 103 Knight, Takamine, Kim 8, 10, 17 Overall Outcome 1–20 TIME TO RESPOND No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.36(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation