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Patent Trials and Appeals Board

Dec 4, 2020

2020001156 (P.T.A.B. Dec. 4, 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.
14/341,306 07/25/2014 Robert Alvarado 16-31779 2230
25189 7590 12/04/2020
Daniel M. Cislo
Cislo & Thomas LLP
12100 Wilshire Blvd.
Suite 1700
Los Angeles, CA 90025
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/04/2020 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):
admin@cislo.com
pat@cislo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT ALVARADO, MATTHEW WAPNICK,
MARK WAPNICK, and JASON WOOD
____________________

Appeal 2020-001156
Application 14/341,306
Technology Center 3600
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
IRVIN E. BRANCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing1 under 37 C.F.R. § 41.52(a),
requesting that we reconsider our Decision of September 18, 2020, wherein
we reversed the Examiner’s rejection of claims 37–42 under 35 U.S.C.
§ 103, and we entered a new ground of rejection of claims 37–42 under 35
U.S.C. § 101 because the claimed invention is directed to patent-ineligible
subject matter. We have reconsidered our Decision in light of Appellant’s

1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board. Arguments not
raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41,
or 41.47 are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1).
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comments in the request, and are not persuaded that we misapprehended or
overlooked the points presented by Appellant.
Appellant’s request is denied.
APPELLANT’S CONTENTIONS
A. Claim 37
As to claim 37, Appellant contends the Board’s Decision
“misapprehended or overlooked” (Req. Reh’g 3) that “The Present
Invention is Not Directed to an Abstract Idea” (Req. Reh’g 4).
In the Board’s Decision on Appeal, the Board concluded
that claim 37 recited a series of steps for managing a human
conference in a courtroom procedure and a legal interaction. The
Board determined that this was one of the certain methods of
organizing human activity identified in the abstract idea
groupings of the 2019 Revised Guidance. Decision on Appeal at
14.
However, . . . the claims are actually directed to a system
for managing a remote conference having a plurality of cases and
a plurality of participants. Managing a plurality of cases and a
plurality of participants is different from managing a human
conference in a courtroom procedure or a simple legal
interaction. . . .
For this reason, there is a difference between creating a
technological improvement, that happens to be designed with a
courtroom environment in mind, and actually conducting a
courtroom proceeding in person.
Req. Reh’g 4 (emphasis added).
The examples of the 2019 Revised Guidance 84 Fed. Reg.
at 52 (i.e. social activities, teaching, and following rules or
instructions) had all been things that had long been routinely
performed by humans without any kind of technological
assistance. By contrast, managing remote conferences, as is the
case in the present invention, is a technology which inherently
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could only take place in the context of networked
communications, could not be performed by a human without
technological assistance, and may only operate in that particular
technological context to make networked communications more
effective.
Req. Reh’g 5–6 (emphasis added).
B. Claim 38
As to claim 38, Appellant contends the Board’s Decision
“misapprehended or overlooked” (Req. Reh’g 3) that “the Present Claims
Improve Underlying Technology and are Directed to a Practical
Application” (Req. Reh’g 6).
Here, like in DDR Holdings and Diamond, the claims as a
whole recite limitations that constitute improvements to the
underlying technology.
For example, Claim 38 recites:
[The method of claim 37 wherein, a]t the
moderator’s exclusive control, participants may be
placed in a subconference individually, in
predetermined groups, or as a whole at any time
without disruption of the currently active case.
This claim’s limitations demonstrate a technological
improvement to network communications technology that did
not exist at the time the present application was filed.
Specifically, the multi-channel structure of the present
invention provided the ability to have separate conferencing
channels be opened, controlled, and structured in ways that did
not exist before. As the claim recites, participants may be placed
in a subconference . . . at any time without disruption of the
currently active case. The lack of disruption of the currently
active case shows that the system had the ability to have multiple
conferences simultaneously running at the same time, which
was an improvement over the existing underlying networking
technology.
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Previous technologies, such as the Ramachandran
reference cited by the examiner, merely had the ability to mute
or cut audio of participants on a single conference call. In
contrast, the present invention had the ability to have
simultaneous private interactions, which never existed in the
prior art.
Req. Reh’g 7–8 (emphasis added).
C.
As to claim 38, Appellant contends the Board’s Decision
“misapprehended or overlooked” (Req. Reh’g 3) that the Present Claims
“Would Not Be Considered Well-Understood, Routine, or Conventional
Activity in the Field” (Req. Reh’g 8).
Here, . . . the improvement to networking communication
systems, i.e. the ability to have multiple communication
channels running simultaneously within one conference, did
not even exist before the present invention. This shows that the
present invention goes even further than the invention of CR
Bard.
In other words, if a technological improvement over
networking technologies, such as the limitation covering the
ability to subconference without disruption of the active case,
did not even exist, it could not have been well-understood,
routine, or conventional in the field.
Support for this may be further demonstrated by recent
developments in web conferencing technologies during the
COVID-19 pandemic. Many have begun to implement
“breakout rooms” and other multi-room capabilities many
years after the present invention. This shows that even if
someone were to argue that the technology was “well-
understood” at the time of the invention, it would beg the
question as to why they did not implement such a useful feature
back when the present invention was created.
Req. Reh’g 9 (emphasis added).
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ANALYSIS
A. Claim 37
As to Appellant’s “not directed to an abstract idea” argument
(contention A), we disagree.
Contrary to Appellant’s rehearing argument that “[m]anaging a
plurality of cases and a plurality of participants is different from managing a
human conference in a courtroom procedure or a simple legal interaction”
(Req. Reh’g 4), we determine that managing a plurality of cases with “a
judge participant” and “representative participants” is managing a human
conference in a courtroom procedure or a legal interaction. Further,
Appellant’s argument, that “managing remote conferences . . . could not be
performed by a human without technological assistance, and may only
operate in that particular technological context to make networked
communications more effective” (Req. Reh’g 5–6 (emphasis added)),
overlooks that “[a]n abstract idea does not become nonabstract by limiting
the invention to a particular field of use or technological environment, such
as the Internet [or] a computer.” Intellectual Ventures I LLC v. Capital One
Bank (USA), N.A., 792 F.3d 1363, 1366 (Fed. Cir. 2015).
Also, in determining whether the claim recites an abstract idea “we
consider the claims ‘in their entirety to ascertain whether their character as a
whole is directed to excluded subject matter.’” CardioNet, LLC v.
InfoBionic, Inc., 955 F.3d 1358, 1367 (Fed. Cir. 2020) (quoting McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)).
Contrary to Appellant’s argument, for the reasons set forth in the Decision at
pages 12–14, we determine that the focus of claim 37 is:
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managing a human conference in a courtroom procedure (i.e., a
legal interaction (or more broadly for managing personal
behavior or interactions between people)); and a legal
interaction (or more broadly managing personal behavior or
interactions between people).
Decision 14. Our determination is reinforced by Appellant’s Specification.
The disclosed technology pertains to a system for
scheduling and managing a conference between multiple remote
parties, and is preferably applied in support of the use of remote
conferencing for interactions which would otherwise take place
in a physical courtroom setting.
Spec. ¶ 1 (emphasis added).
[Technology] is disclosed herein as applied in the context
of using remote conferencing to facilitate interactions between
judges and attorneys which would otherwise take place in a
physical courtroom setting.
Spec. ¶ 23 (emphasis added). The Specification repeats this goal seven
times in paragraphs 23–25.
Further, as to the claimed invention, Appellant’s Appeal Brief is
replete with assertions directed to managing the courtroom procedure.
The present invention was specifically created to operate
in a court environment and has been structured according to the
unique needs of how a courtroom’s daily docket operates.
Appeal Brief 12 (emphasis added).
The claim limitations stated above has four main elements
that define the type of participants that exist in the claimed
method and are specifically tailored to simulate how a court
works in real life. First, is the judge participant who is defined
to always be an active participant in each of the plurality of cases.
In other words, the judge will always be active because the judge
needs to be able to speak in every case of the day.
Appeal Brief 13 (emphasis added).
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This method is not like other videoconferencing situations
as there are strict rules that need to be followed during a court
proceeding. This not a situation where a host is simply
scheduling calls; rather, the attorneys here appear in court
based on the judge’s schedule, not the other way around.
Appeal Brief 19 (emphasis added).
The way this is claimed is important to the system because
it creates a seamless court experience just as someone would
see if you walked into a courtroom in person.
Appeal Brief 21 (emphasis added).
Furthermore, speaking as to dependent claim 41, Appellant stated:
The present invention must replicate what is happening
in the actual courtroom to be a viable solution.
Appeal Brief 32 (emphasis added).
B. Claim 38 – First Argument
As to Appellant’s “improves underlying technology and directed to a
practical application” argument (contention B), we disagree.
First, we are unable to find the phrase “without disruption” in
Appellant’s application as filed. Therefore, we determine that the phrase
“without disruption of the currently active case” of claim 38 is shown at
paragraph 36 of Appellant’s Specification as case handling embodiments
(a) where a first active case splits off participants into a subconference while
the first active case proceeds without the subconference participants, and
(b) where a first active case splits off participants into a subconference while
the first active case pauses and an unrelated second case becomes the active
case.
Second, we determine that both case handling embodiments have long
existed in physical courtrooms where judges manage complex litigation with
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complex issues and party relationships. Such complex litigation includes
subconferences such as (a) addressing issues in the judge’s chambers away
from the courtroom, (b) separate settlements among some parties while the
main litigation continues, (c) sidebars, and (d) other interactions among
subgroups of the parties.
Third, we determine that nothing in Appellant’s claim 38 requires
anything more than separate remote conference sessions for the first active
case, the subconference, and (optionally) the second active case in order to
implement these long existing embodiments remotely.
Contrary to Appellant’s argument, we find no improved underlying
technology or practical application.
C. Claim 38 – Second Argument
As to Appellant’s “not well-understood, routine, or conventional
activity” argument (contention C), we disagree.
Appellant acknowledges that teleconferencing is an existing
technology. Spec. ¶ 3, next to last sentence. Appellant also states:
Teleconferencing can be an effective way to conduct
meetings between multiple remotely located parties while
avoiding the time and expense of travel. . . . With
teleconferencing, multiple employees can collaborate on a single
task as if they were in the same room, regardless of their
geographic location. While commonly referred to as
teleconferencing, some collaborative conference systems may
allow conferencing via typed text, such as a chat room, audio,
such as a phone conference, or even video, such as a video chat
room.
Spec. ¶ 2. Also, Appellant acknowledges the existence of video
conferencing providers, “such as Cisco’s Webex, Skype, and Adobe
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Connect.” Appeal Br. Appendix A, Inventor Alvarado’s Declaration,
paragraph 4.
Contrary to Appellant argument that here claim 38 recites an
“improvement to networking communication systems, i.e.[,] the ability to
have multiple communication channels running simultaneously within
one conference” (Req. Reh’g 9 (emphasis added)), we do not find this
language in claim 38. Rather, we determine that that nothing in Appellant’s
claim 38 requires anything more than separate well-understood, routine, or
conventional remote conference sessions in order to implement the claimed
conference and subconference(s).
DECISION
Based on the record before us, we deny Appellant’s Request for
Rehearing. Appellant has not persuasively identified any points the Board
misapprehended or overlooked.
The Request for Rehearing is denied.
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
37–42 101 Eligibility 37–42

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Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
37–42 103 Ramachandran 37–42
37–42 101 Eligibility 37–42
Overall
Outcome
37–42
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED