Ex Parte 5884039 et al

Board of Patent Appeals and Interferences

Nov 16, 2011

90009016 (B.P.A.I. Nov. 16, 2011)

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.
90/009,016 02/29/2008 5884039 362427.05083 7568
84666 7590 11/17/2011
Reed Smith LLP
P.O. Box 488
Pittsburgh, PA 15230-0488
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/17/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________

Ex parte INTELLECTUAL VENTURES FUND 61, LLC
____________

Appeal 2011-010485
Reexamination Control 90/009,016
Patent 5,884,039
1

Technology Center 3900
____________

Before KARL D. EASTHOM, KEVIN F. TURNER, and STEPHEN C. SIU
Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1
Ludwig et al., System for Providing a Directory of AV Devices and
Capabilities and Call Processing Such that Each Participant Participates to
the Extent of Capabilities Available (issued Mar. 16, 1999).
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STATEMENT OF THE CASE
This proceeding arose from a third party request for ex parte
reexamination of the ’039 patent. Appellant and real party in interest,
Intellectual Ventures Fund 61 LLC, seeks review under 35 U.S.C. § 134(b)
and appeals from the final rejection of claims 1-36. (See Br. 6, 8.)
We AFFIRM.
The ’039 patent and contested claims describe a method for providing
multimedia (i.e., audio and video) teleconferencing for a plurality of users.
(See ‘039 patent, Abstract.)
Claim 1, on appeal, follows:
1. (Original) A method of conducting a teleconference among a plurality
of participants having workstations with associated monitors for displaying
visual images, and with associated AV capture and reproduction capabilities
for capturing and reproducing video images and spoken audio of the
participants, the workstations being interconnected by a first network, the
network providing a data path for carrying digital data signals among the
workstations, the method comprising the steps of:

(a) managing a data conference during which data is shared in real-
time among a plurality of the participants and displayed on the monitors of
their respective workstations;

(b) managing a videoconference during which the video image and
spoken audio of one of the participants is reproduced in real-time at the
workstation of another of the participants;

(c) providing at least one AV device with associated capabilities of
providing at least audio and/or video signals to a workstation;

(d) providing at least one directory of the AV devices and each
device's associated capabilities;

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(e) processing a workstation request for provision of audio or video
signals to cause an appropriate AV device to provide the requested signals to
the workstation;

(f) tracking the audio and video capabilities associated with each
workstation; and

(g) processing a call, from a second to a first participant, based on the
capabilities associated with the first participant, such that, if at least one
capability of the set of capabilities consisting of audio capture, audio
reproduction, video capture, video reproduction, and the capability of
connecting to the first network, is not available to at least one of the
participants, each of the plurality of participants can participate in the
teleconference to the extent of the capabilities available to the participant.

The Examiner relies on the following prior art references at issue on
appeal:
2

Mann US 4,975,904 Dec. 4, 1990

Ahuja, S.R., Ensor J. Robert, and Horn, David N., The Rapport
Multimedia Conferencing System, ACM Proc. Conf. on Office Inf. Sys.,
pp. 1-8, 1988 [hereinafter Ahuja ’88].

Ahuja, S.R. and Ensor, J.R., Coordination and Control of Multimedia
Conferencing, IEEE Communications Magazine, pp. 38-43 (May 1992)
[hereinafter Ahuja ’92].

The Examiner rejected the claims under 35 U.S.C. § 103(a) as obvious
as follows: Claims 1, 3-7, 9, 17, 19-23, 25, 26, and 29-36 based on Ahuja

2
See the Answer at page 3 for full citations to other relied upon prior art
references which are not fully cited here, but are alluded to in the listed
rejections infra, because Appellant does not present separate patentability
arguments directed thereto.
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’92, Ahuja ’88, and Mann; claims 2, 8, and 24, based on Ahuja ’92, Ahuja
’88, Mann, and Yamaguchi; claims 10-14 based on Ahuja ’92, Ahuja ’88,
Mann, and Palmer; claims 15 and 16 based on Ahuja ’92, Ahuja ’88,
Mann, Palmer, and McFarland; claim 27 based on Ahuja ’92, Ahuja ’88,
Mann, and McFarland; and claims 18 and 28 based on Ahuja ’92, Ahuja ’88,
Mann, and Watabe. (Ans. 4, 33, 36, 39, 40, 41.)
ISSUE
Did Appellant establish that the Examiner erred in finding that the
combination of Ahuja ’92, Ahuja ’88, and Mann renders obvious a
multimedia conference method in which the method tracks the audio and
video capabilities associated with each work station, employs a directory of
such capabilities, and processes calls based on the capabilities of a call
recipient’s device, as set forth in steps (d), (f), and (g) of claim 1?
FINDINGS OF FACT
Ahuja ‘92
A1. Ahuja ’92, citing to Ahuja ’88, describes a “Rapport multimedia
conferencing system” as follows: “The Rapport multimedia conferencing
system [1,2] allows people to hold real-time discussions in which they share
voice, video, and program displays. Rapport provides call management
mechanisms for its users and coordinates communications in various media
during conferences.” (P. 39-40 (citing Ahuja ’88 at n.1).)
A2. Rapport manages different multimedia links, allowing users to
interact with various multimedia devices such as telephones, cameras,
videotape players, and other devices connected to work stations during a
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virtual “meeting” in which users view each other on the connected
workstations monitors:

Rapport can manage calls with a mix of devices, including both
computers and telephones. Call participants with appropriate
monitors may see each other through video feeds and also share
displays of other video-based information. In the present
implementations of the system, computer programs based on
the UNIX
®
operating system and the X Window System [6]
may be associated with Rapport calls. These programs, termed
application programs, produce identical displays on the
computer screens of call participants.
(P. 40, col. 1, 1
st
¶)

The Rapport user is able to control the receipt and
integration of multimedia information that is exchanged among
conference participants. Again, Rapport's management of
communication links and various media-specific services make
this user-level control possible. A conference named "Green
Room" with two participants (Sid and Bob) is illustrated in
Fig. 3. At the moment illustrated, both Sid and Bob are
exchanging information represented as video, voice, and
computer program displays using the cameras, telephones, and
computers on their desks. Sid also is providing video-based
information from his videotape player. While Sid is producing
program output by executing program A, Bob is executing
programs B and C to create computer-based displays. Sid and
Bob can both provide input to the three programs. Each call
participant receives, in turn, common information from
Rapport, which is produced by combining or multicasting the
video, voice, and computer program outputs.
(P. 40, col. 2, 4
th
¶. (emphasis added).)
A3. As seen in the proceeding quotation, link management involves “media-
specific service.” In other words, the control is media dependent as more
fully described next:
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User management of meeting conduct is based largely
upon connection management. Rapport provides controls for
connection management by extending its underlying
communication network(s) to coordinate communications over
multiple links. These links are established among conference
participants, and the number and characteristics of these links
depend on the media through which each participant
communicates. Since this link management remains accessible
to participants during a conference, participants may add or
drop other conferees and use more or fewer media for
information exchange as the conference progresses. Rapport
user may be a member of more than one conference at a time,
switching among them as desired.
(P. 40, col. 2, 3
rd
¶. (emphasis added).)

A4. To control the media dependent communication links, including
switching thereof, Rapport employs local user agents, a collection of such
agents, or a centralized agent:
Another view of the Green Room conference of Sid and
Bob is presented in Fig. 4. Here the communications take place
over three distinct networks: a baseband cable network for the
distribution of video, a telephone network for exchange of
voice, and a local area network for the exchange of conference
protocol messages and program data. The figure highlights the
implementation of Rapport as a “user agent” executing on each
conferee's computer. These user agents provide the user with
functions to control meeting conduct and to define their role
in the creation and presentation of shared information. These
agents also must control network switches to create the shared
information.
(P. 41, col. 1, 1
st
¶.)
When multimedia information is exchanged among
conference participants over more than one network, some
integrating agent, which is not part of any one network,
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controls and coordinates transmissions. This agent may be a
collection of application level programs executing on user
machines, as illustrated in Fig. 4, or some centralized agent
with interfaces accessible from user machines.

(Id. at 4
th
¶ (emphasis added).)
A5. In Rapport, each person must request and name the second
person to communicate therewith (p. 41, col. 2, 2
nd
¶), and the Rapport user
agents manage the request, taking into account and responding to different
media associated with changing requests:
In Rapport, each conferee’s user agent unifies the naming
conventions of the local area data, telephone, and video
networks. Conference participants should be able to add and to
drop other participants. . . . Also, as participants change the
media used to exchange information, distribution patterns can
change. In the Rapport system, the user agents respond to these
change requests altering distribution sets of creating and
destroying links on those networks that do not allow such
changes directly.

(Id. at 3
rd
¶. (emphasis added).)
Ahuja ’88
B. Ahuja ’88 describes Rapport work stations as follows: “A Rapport
work station may establish conferences with a heterogeneous mix of devices,
including both work stations and telephones.” (P. 2, § 1.1, 3
rd
¶.) In other
words, users with a “less capable device have only a restricted view of the
conference. Of course, if a conferee is using only a telephone, he or she has
no visual displays at all.” (P.3, 2
nd
¶.)
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Mann
C. Mann discloses a directory (Fig. 2B) which lists devices/services
26, 28, 30, and 32 attached to different nodes in a network so that a device
server 24 can provide the device/service to a requestor at a terminal 18 or
personal computer 22 on the network 10. (See col. 6, ll. 8-64, Figs.1, 2B.)
Such services/devices include “processors 26, disk drives 28, tape storage
units 30 and data links 32 (such as telephone lines or microwave links) and
analog to digital converters 33.” (Col. 5, ll. 64-68, Fig. 1.)
ANALYSIS
Appellant contends that the combination fails to teach or suggest
“tracking the audio and video capabilities associated with each workstation”
as recited in claim 1.
3
(Br. 24.) Appellant also argues that the “tracking”
step (f) and directory providing step (d) constitute distinct elements and that
the combination also fails to teach or suggest the directory. (See Br. 12, 28-
29.) These contentions lack merit for the reasons that follow.
The ‘039 patent neither precludes nor requires the claimed directory to
be used for tracking, and Appellant fails to explain in a clear fashion what
“tracking audio and visual capabilities” means. See In re Morris, 127 F.3d
1048, 1056 (Fed. Cir. 1997) (“It is the applicant’s burden to precisely define
their invention, not the PTO’s.”).
Claim 1, step (c) provides some insight as to “tracking.” That step
recites “providing at least one AV device with associated capabilities of

3
Appellant’s arguments primarily focus on common elements recited in
claims 1 and 32. As such, claims 1 and 32 are selected hereby to represent
the claims on appeal.

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providing at least audio and/or video signals to a work station.” The phrase
indicates that an AV’s “capabilities” comprise its audio and/or video signals.
As such, tracking such capabilities reasonably encompasses controlling
them, such as, for example, by one or more of the following: locating the
AV devices, sending signals to and from them in the proper format, and
controlling switching between the various AV devices and users.
Appellant’s proffered support in the ‘039 patent for such tracking does
not refute that interpretation. For example, the proffered support relates, at
least in part, to keeping track of client program locations: “The service
database thus keeps track of the location of client programs and the types of
collaborative sessions in which they can participate.” (‘039 patent, col. 21,
ll. 11-15; see Br. 12 n. 12 (citing the ‘039 patent at col. 21, ll. 5-20 to
support the tracking step).) Another proffered citation indicates that tracking
refers simply to automatically controlling media transfers. (See Br. 12 n. 12
citing the ‘039 patent at col. 39, ll. 2-12.).) Appellant states that “[t]his [i.e.,
tracking,] “enables processing.” (Br. 12.) Similarly, Appellant’s proffered
support in the ‘039 patent for the recited “directory of the AV devices and
each device’s associated capabilities” includes “‘necessary addressing
information from the Directory Service’” which in turn allows the system to
control “‘various states of that call, and to control AV/Switching Circuitry’”
and other related functions. (Br. 11 n. 10 (quoting the ‘039 patent, citations
omitted).)
Since the claimed directory providing step (d) implicitly includes
listing the AV capabilities, tracking must mean something different than
providing a directory list (even though Mann’s directory at least suggests
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tracking as the Examiner finds with respect to Mann (see Ans. 8)). Rapport
provides automatic control of and enables media dependent
communications. (A2-A5.) In other words, Rapport automatically
coordinates and thereby tracks the specific capabilities (audio and visual
signals) at each worksite in order to transfer the correct data formats over the
proper switches. (A1-A5, see also B.)
As the Examiner specifically finds, Rapport’s user agents control
communication requests for multimedia conferencing and the switches
associated therewith. (Ans. 8-9; 44-45; accord A1-A5.) For example, in
Rapport, “as participants change the media used to exchange information,
distribution patterns can change. . . . [and] the user agents respond to these
change requests altering distribution sets of creating and destroying links on
those networks that do not allow such changes directly.” (A5.) Also, “the
number and characteristics of these links depend on the media.” (A3.) That
is, Rapport tracks AV capabilities as recited in claim 1 by controlling media
dependent links.
The Examiner reasons that Ahuja ’92 does not “explicitly” teach the
claimed tracking step (and a directory) (Ans. 7), but finds that Ahuja ’92
“indirectly indicates a directory of AV devices . . . and the tracking [of] AV
devices with work stations.” Hence, the Examiner relies on Mann’s
directory control system to supplement Ahuja’ 92 and thereby bolster the
obviousness determination related to the tracking and directory elements.
(Ans. 7-9, 44-45.) Based on the foregoing discussion, the Examiner’s
finding that Rapport controls switching of different media and indirectly
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teaches tracking (id.) sufficiently demonstrates that Rapport, with or without
Mann, at least suggests tracking capabilities as recited in claim 1.
Appellant’s argument that the combination fails to suggest the
directory recited in claim 1 (see Br. 27-30) also lacks merit. Appellant
reasons that Mann does not teach or suggest “‘tracking the audio and video
capabilities associated’ with [each work station].” (Br. 30; accord Br. 31.)
That rationale is not clear given Appellant’s argument supra that tracking
and providing a directory are distinct claim elements. The argument also
amounts to an improper separate attack on the references, as the Examiner
implies, because “Mann is not cited for disclosing AV devices.” (Ans. 45.)
Rather, as the Examiner explains, Mann “provides a directory structure for
explicitly associating devices and capabilities. [Accord C.] It would have
been obvious to incorporate a convenient directory structure from Mann to
manage devices and capabilities as found in the Ahuja references (AV
devices).” (Ans. 45.)
Moreover, Mann at least suggests tracking AV devices using a
directory by disclosing the control of a wide variety of devices of different
data structures listed in such a directory, including digital and voice devices.
(See C.) Appellant acknowledges that “the Mann system uses the Fig. 2B
services directory’s [sic] to select which node will provide the requested
service.” (Br. 31.) As such, Mann’s directory operates in a similar fashion
to the ‘039 patent’s directory as they both appear to aid in device
connections and as such, relate to tracking capabilities. As the Examiner
finds and reasons (Ans. 7-9, 44-45), it would have been obvious in view of
Mann to modify the Rapport system to include a directory “of the AV
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devices and each device’s capabilities and thus tracking,” in order “to
provide a mechanism for controlling and coordinating devices” (Ans. 8),
since both references deal with controlling connections of different
devices/services. (A1-A4; C.)
In other words, the Rapport user agents or centralized agent (A4)
control(s) the multimedia system, “responding to change requests,” “as
participants change the media” (A5), so that a directory listing capabilities as
suggested by Mann (C) would have aided the system control. (Accord
Ans. 44-45). Employing Mann’s directory in the Rapport system would
have constituted a predictable use of a familiar prior art element for its
intended function in a similar system. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416, 417 (2007).
Appellant’s argument that the combination fails to teach or suggest
processing a call to a first participant based on the capabilities associated
with that participant also lacks merit. (Br. 32-33.) As the Examiner
explains, Ahuja ’88 specifically teaches connecting to a participant based on
that participant’s capabilities. (Ans. 46-47.) “‘Of course, if a conferee is
using only a telephone, he or she has no visual displays at all.’” (Ans. 47
(quoting Ahuja ’88); accord B (same quote).) Appellant’s counter
arguments (Br. 32-34) fail to show error in the Examiner’s rationale that
Rapport’s media dependent link system satisfies the disputed claim element.
(See A1-A5; B.)
Stated differently, claim 1, step g, primarily sets forth an implicit
restriction – i.e., it restricts the method to processing only the AV
capabilities (e.g., voice) of a device (e.g., telephone). But of course a system
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cannot process more than what a device provides – i.e., the argued claim
phrase is analogous to announcing that blood cannot be squeezed from a
turnip. Appellant’s counter argument that a first participant in Rapport can
dictate how many AV capabilities the system can process (see Br. 33
(arguing that Rapports “invitee [first participant] might choose to turn off the
video capability”)) fails to show that the Rapport system does not process
the call based on the capabilities of that first participant.
Appellant’s comment that Examiner has misread claim 1 because the
Examiner finds that Ahuja ’92 tracks “‘AV devices with work stations’”
(Br. 24 (quoting Office Action, citation omitted)) and that claim 1 requires
“(i) AV devices as distinct from (ii) work stations” (id.) also fails to show
error. The Rapport system, with or without Mann, at least suggests tracking
connections, locations, and associated signals, to work stations and their
distinct AV devices (A2), and thereby tracks the capabilities of the AV
devices in light of the ‘039 patent as discussed supra.
4

4
Such specifically disclosed Rapport “multimedia” devices include
“cameras, telephones,” and a “videotape player,” implicitly connected to
“computers on . . . desks.” (A2.) Other such multimedia devices include
application programs and those implied by video feeds. (A2.) In similar
fashion, Appellant points to “‘multimedia resources’” (Br. 11 n. 7 (quoting
‘039 patent, citation omitted)) as including “‘VCRs, laser discs, TV feeds,
etc.’” (id. at n. 8 (quoting ‘039 patent, citation omitted)). Appellant also
points to “a fax machine” (Br. 29) which provides a single data format.
Thus, Rapport’s “multimedia” system (A1), which includes devices which
send a single format type, like a telephone (e.g. audio), or a camera (video),
or more than one format, like a videotape player (audio and visual),
constitute, or at least render obvious, an AV device in light of the
‘039 patent and arguments presented.
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With respect to claim 32, Appellant points to the claim phrase
“routing a video conference call [(1)] for that participant, [(2)] to the
workstation at which that participant is logged in.” (See Br. 36-37.) But
Appellant’s arguments focus on the Rapport “virtual meeting room” as not
“taking into account the capabilities of the respective workstation of each
participant that chooses to enter the virtual meeting room.” (Br. 37.) Also,
Appellant states that Mann fails to disclose the argued “logged in” claim
phrase supra. (See Br. 37.)
The Examiner responds to these arguments and sets forth the
underlying findings supporting the rationale that Rapport’s “UNIX operating
system” requires logging and routes calls to the associated work station,
further explaining that Rapport’s “virtual meeting room has nothing to do
with the underlying functionality” of the Rapport system. (Ans. 48; accord
A2.) If Appellant’s arguments are directed to an alleged lack of a teaching
about being “logged-in,” as set forth in claim 32, and/or to common claim
elements with claim 1 discussed supra, the arguments are unclear and fail to
show error in the Examiner’s rationale. Again, “[i]t is the applicant’s burden
to precisely define their invention, not the PTO’s.” In re Morris, 127 F.3d at
1056.
Based on the foregoing discussion, the claimed method of conducting
a teleconference requires no unobvious steps over prior known systems such
as Rapport’s system as modified by providing Mann’s directory to aid in the
control thereof. As such, Appellant has not demonstrated error in the
Examiner’s rejection of claims 1 and 32 nor of claims 2-31 and 33-36 not
separately argued with particularity.
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DECISION
The Examiner’s decision to reject claims 1-36 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

ak

Reed Smith, LLP
P.O. Box 488
Pittsburgh, PA 15230-0488

Third Party Requester:

Tawni L. Wilhelm
Shook, Hardy & Bacon, LLP
2555 Grand Blvd.
Kansas City, MO 64108-2613