Ex Parte 7,152,093 et al

Board of Patent Appeals and Interferences

Jan 27, 2011

90009021 (B.P.A.I. Jan. 27, 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.
90/009,021 02/29/2008 7,152,093 362427.05093 5897
84666 7590 01/28/2011
Reed Smith LLP
P.O. Box 488
Pittsburgh, PA 15230-0488
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/28/2011 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 PRAGMATUS AV LLC
____________

Appeal 2010-0011766
Reexamination Control 90/009,021
Patent 7,152,093 B21
Technology Center 3900
____________

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

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL2

1 Patented to listed inventors Lester F. Ludwig, J. Chris Lauwers, Keith A.
Lantz, Gerald J. Burnett, and Emmett R. Burns, “System for Real-Time
Communication Between Plural Users” (Dec. 19, 2006).
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
This proceeding arose from a third party request for ex parte
reexamination of the ‘093 patent. Appellant and real party in interest,
Pragmatus AV LLC, seeks review under 35 U.S.C. § 134(b) and appeals
from the final rejection of all pending claims 1-49. (Br. 15.) 3 This appeal is
related to Appeal Nos. 2010-011768, 2010-011770, 2010-011843, and 2010-
012271, mailed concurrently herewith.
We AFFIRM-IN-PART.
The ‘093 patent describes a video conferencing system. The system
creates a record of multiple users logging into the system, the location of
where at least one log-in occurs, and an indication of users which have not
logged on. (Abstract; col. 22, ll. 37-39.)
Claims 1 and 19 follow:
1. (Original) A system for real-time communication between a plurality of
separated users, comprising
(a) at least one communication device for use by each of the plurality
of users and each having an associated display and at least one associated
client program;
(b) at least one communication network to which at least first and
second users can connect by logging in using their respective
communication devices;
(c) at least one service record for the first and second logged in users,
each service record including user identification information and an
associated location of at least one client program associated with the
communication device where at least one user logged in;

3 See the “Statement Under 37 CFR 3.73(b)” (filed Dec. 22, 2010) (showing
Pragmatus AV LLC as the current assignee).
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(d) a plurality of service servers, separate from each other and the
communication devices, each replicating and having stored thereon at least
one service record for the first user;
(e) a plurality of service servers, separate from each other and the
communication devices, each replicating and having stored thereon at least
one service record for the second user
(f) computer software for
(i) causing display of a user identifier for at least the second
user in a personalized list including a graphical icon representing at least one
user on the display of at least the first user's communication device, and
(ii) generating a signal in response to a first user selecting the
displayed second user's identifier; and
(g) collaboration initiation software that functions
(i) to cause the retrieving of necessary addressing information
of the second user, and
(ii) to cause the establishing of a connection between the first
and second users, and thereby
(iii) to enable real-time communication including at least real-
time text messages to be displayed on the display of at least one user,
wherein the system is configured to indicate to the first user whether another
user is not logged in and wherein the system is further configured to register
the service capabilities for each user and to establish communications
between the users based on the registered service capabilities.

19. (Original) A system for real-time communication between a
plurality of separated users, comprising
(a) at least one communication device for use by each of the plurality
of users and each having an associated display and at least one associated
client program;
(b) at least a first and a second communication network each
including at least one service server, separate from the communication
devices, and to which at least first and second users can connect respectively
by using their respective communication devices;
(c) at least one service record for the first and second connected users,
each service record including user identification information and an
associated location of at least one client program associated with the
communication device that the users used to connect to the networks, each
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service record being replicated on at least one service server in each of the
first and second networks;
(d) computer software for
(i) causing display of a user identifier for at least the second
user on the display of at least the first user's communication device, and
(ii) generating a signal in response to a first user selecting the
displayed second user's identifier; and
(e) collaboration initiation software that functions
(i) to cause, in response to the signal, the retrieving of necessary
addressing information of the second user, and
(ii) to cause the establishing of a connection between the first
and second users through at least their respective communication networks,
and thereby
(iii) to notify the second user of the communication from the
first user and the first user's identity to enable communication displayed on
the display of the first and second users wherein the system is further
configured to register the service capabilities for each user and to establish
communications between the users based on the registered service
capabilities.

The Examiner relies on the below-listed prior art references to reject
the claims as follows:
Inga 5,321,520 June 14, 1994
Connolly 5,325,419 June 28, 1994
Sato EP0436345 A2 Oct. 7, 1991

Ahuja, S.R., Ensor, J.R., and Luco, S.E., A Comparison of Application
Sharing Mechanisms in Real-Time Desktop Conferencing Systems, Comm.
of the ACM, pp. 238-48 (1990) [hereinafter Ahuja].

Claims 1, 3, 4, 7, 19, 20, 23, 25, 27, 28, 34, 38, 40, 42, 43, 44, and 47
are rejected under 35 U.S.C. § 103(a) as obvious based on Sato and Ahuja.
Claims 2, 5, 6, 8-18, 24, 29-33, 35, 37, 39, 41, 45, 46, 48, and 49
stand rejected under 35 U.S.C. § 103(a) as obvious based on Sato, Ahuja,
and Connolly.
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Claims 21, 22, 26, and 36 stand rejected under 35 U.S.C. § 103(a) as
obvious based on Sato, Ahuja, and Inga.

ISSUES
Appellant’s responses to the Examiner’s findings raise the following
issues:4
Did the Examiner err in finding that the combination of Sato and
Ahuja renders obvious a system in which users can log in and which is
capable of creating a record of log-ins, as set forth in claim 1?
Did the Examiner err in finding that the combination of Sato, Ahuja,
and Connolly renders obvious several argued claim limitations in claim 19?
Did the Examiner err in finding that the combination of Sato, Ahuja,
and Inga renders obvious the system real-time text capability as recited in
claim 20?

4 The Examiner denied and Appellant requests entry of three Markman (i.e.,
claim construction) rulings in related district court proceedings. (Br. 21-23.)
This matter relates to petitionable subject matter which is not appealable to
the Board. See 37 CFR 1.181. Nonetheless, as a matter of expediency, the
panel inspected the three claim construction orders attached in the Brief
App’x: Collaboration Properties, Inc. v. Tandberg et al., “Memorandum &
Order,” No. C 05-10940 MHP (N.D. Cal., June 22, 2006); Collaboration
Properties, Inc. v. Polycom, Inc., “Order Granting CPI’s Motion . . . Re:
Claim Construction of United States Patents Nos. 5,767,897, 5,867,654,
5,896,500, 6,212,547, and 6,343,413,” C-02-4591 MMC (N.D. Cal.
May 5, 2004; and Collaboration Properties, Inc. v. Polycom, Inc., “Claim
Construction of United States Patents Nos. 5,767,897, 5,867,654, 5,896,500,
6,212,547, and 6,343,413,” C-02-4951 MMC (N.D. Cal. Mar. 3, 2004).
None of the claim terms construed there appears to have any clear bearing
here (and Appellant identifies none, notwithstanding the non-entry of the
orders).
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Did the Examiner err in finding that the combination of Sato, Ahuja,
and Inga renders obvious the system list capability as recited in claim 21?
Did the Examiner err in finding that the combination of Sato, Ahuja,
and Inga renders obvious a system configured to indicate whether another
user is not connected to a network as recited in claim 22?
Did the Examiner err in finding that the combination of Sato, Ahuja,
and Inga renders obvious a system configured to add a new user to an
existing communication as recited in claim 26?
Did the Examiner err in finding that the combination of Sato and
Ahuja renders obvious a system capable of tracking address information as
recited claim 40?
Did the Examiner err in finding that the combination of Sato and
Ahuja renders obvious a system capable of receiving and blocking video
information while maintaining a display of text as set forth in claim 47?

FINDINGS OF FACT
Sato
S1. Sato discloses a teleconferencing system employing an ISDN network
line, and computer telephones which include inter alia, a screen, CPU,
ROM, RAM, operation unit, and other interface and decoding units. The
system allows telephone users to send and store video images and telephone
numbers so that a recipient can identify callers via images of the callers.
(Fig. 3, Fig. 9; col. 2, l. 20 –col. 3, l. 21; col. 10, l. 31 – col. 11, l. 32)
S2. Sato discloses that prior art methods of sending caller’s names have
certain problems. (Col. 1, l. 50 to col. 2, l. 10.)
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S3. Sato discloses sending “voice, data, and a moving image” (col. 10,
ll. 35-36) in one embodiment which includes a “keyboard (not shown)” (id.
at l. 47.) A program executed by the CPU controls the multimedia
communications. (Col. 10, ll. 50-51.)
S4. In one embodiment, “data including the calling party number is
multiplexed and transmitted together with the voice and image on the calling
party side and the calling party number in the transmitted data is separated
and input on the reception side.” (Col. 13, ll. 22-26.)
S5. After reception of a phone number, “if the user contracted with the
calling party number notification service . . . the calling party number is
included.” (Col. 11, ll. 48-53.)
Ahuja
A1. Ahuja discloses a multimedia teleconferencing system “using the
computers and phones in their offices to hold real-time discussions sharing
voice, data, and images.” (§ 1.)
A2. Ahuja’s system allows conferencing users to share applications during
real-time processing. (Abstract.) Ahuja also discloses using pointers, a
whiteboard drawing program, and a facsimile annotation program, to allow
users to annotate videos and/or similar applications discussed during the
meeting. (Fig. 1; § 3.) Ahuja also discloses a text editor. (§ 4.2.)
A3. Figure 1 depicts the screen image of a computer using Ahuja’s system.
Eight conferee images are depicted as participating in a “virtual meeting
room.” First names are depicted next to the participant images. (Fig. 1;
§ 3.) Figure 1 also depicts button controls including “CALL BY NAME,”
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“ADD,” and “DROP” below the displayed images and names of the current
participants of the virtual meeting. (Fig. 1.)
A4. Each workstation in Ahuja comprises a server which communicates
with servers on other workstation computers. (Figs. 3-4.) In the Figure 4
embodiment, servers in the all the workstations receive outputs from an
application running on any one of the workstation computers. (§3.3.)
ANALYSIS
Claims 1-18, 29-35, 37-39, 41-46, 48, and 49
With respect to claim 1, Appellant argues that dialing a telephone
number of another person does satisfy the plain meaning of “logging in.”
Appellant defines the term as follows: “log in, a. Also log on, sign on.
Computers to enter identifying data, as a name or password, into a multiuser
system, so as to be able to do work with the system.” (Brief 34 (citing
http://dictionary.reference.com/browse//log+in).) The Examiner reasons that
a “telephone number corresponds to ‘identifying data’ as well as a
‘password’ and corresponds to a name of a user.” (Ans. 37.)
Claim 1 recites “at least one communication network to which at
least first and second users can connect by logging in using their respective
communication devices.” Appellant reasons that connection to Sato’s
telephone occurs by picking up the telephone, not by dialing a number. (Br.
35.) Appellant’s position is the better of the two. In light of the ‘093 patent,
calling another party does not constitute connection by logging in because
the ‘093 patent discusses calling and logging in, implying a distinction
between the two according to the plain meaning of the terms. (See ‘093
patent, col. 22, ll. 30-44.)
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Based on the foregoing discussion, the Examiner’s rejections of claim
1, and the rejections of claims 2-18, 29-35, 37-39, 41-46, 48, and 49 which
require a similar limitation, will not be sustained, because the Examiner does
not rely on either Ahuja or Connolly to cure the above-noted deficiency in
Sato.
Claims 19 and 23-25
Appellant generally argues that Sato does not suggest “a cause and
effect relationship between the elements required by Claim 19.” (Br. 67
(emphasis deleted). As the Examiner notes, the general nature of this type
of argument “is too ambiguous to address.” (Ans. 36.) With respect to
claim 19, element (c), Appellant argues “[m]ore specifically: . . . [that] Sato
does not keep a service record for logged in users . . . . and information
about the location where a user has logged in.” (Br. 67.) These latter
arguments are not commensurate in scope with claim 19 which does not
recite a logging in capability, including information about where a user has
logged in. Appellant also argues that the same arguments that apply to
element c of claim 1 apply to element c of claim 19, “where the cause and
effect relationship is between ‘use’ and the service record.” (Id.) This
related argument is ambiguous too; the word “use” or any indication that
claim 19 requires a use of the record does not appear.
Perhaps Appellant means to imply that a service record must record
“the associated location of at least one program that the users used to
connect to the networks” (emphasis added to claim 19(c).) Appellant refers
the panel to the arguments in section B.3(iv) of the Brief. (Br. 67.)
However, that section, applying to claim 1, does not clarify the argument.
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The arguments there focus on the unclaimed log in requirement (which is
recited in claim 1 as noted supra). (See Br. 39 (Concluding as follows: “In
the final stage of prosecution and at the behest of the Examiner this
independent claim [1] was amended to include a limitation to the term
location, to associate ‘location’ with the client program associated with the
communication device where at least one user logged in.”))
Appellant characterizes Sato’s Figure 3, relied upon by the Examiner
as constituting the service record, as “an historical record” which is “built up
from calls from the past, i.e., calls that have either been received by or have
been made by a specific user.” (Br. 36.) While Appellant concludes that
this record “is not a record of logged in users,” (id.), setting that argument
aside, and addressing the more generic connection/location requirement in
claim 19(c), this “historical record” of the past reasonably corresponds to a
record of the location at which users connected to the system, as required by
claim 19(c), because the telephone numbers reasonably reveal location
information. That is, according to the Examiner: “The user’s own telephone
number indicates the location of the user when they log in, because they log
in on the telephone associated with that number.” (Ans. 38; accord Ans. 6.)
Appellant does not present persuasive evidence or argument refuting
the Examiner’s finding that Sato’s stored telephone numbers correspond to
the telephone connection location, and thereby satisfies the location element
as recited in claim 19(c). Skilled artisans at the time of the invention would
have recognized that Sato’s telephone numbers correspond to locations of
specific ISDN hard-wired telephone equipment to facilitate billing of the
user. For example, Sato discusses a user contract (S5); i.e., implying or
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suggesting a known billing address associated with the telephone location.
Also, common knowledge at the time of the invention would have informed
skilled artisans that telephone numbers and location were intimately related
at the time of the invention, e.g., call tracing by law enforcement, etc.
In other words, absent a persuasive argument or evidence to the
contrary, Sato’s recorded telephone numbers at least suggest a correlation to
a location of user connection to the system. And while claim 19(c) refers to
the location of a client program stored in service records located in at least
one server, Appellant does not explain why these or similar limitations are
lacking in the proposed combination, thereby waiving arguments based on
such limitations. (See also the discussion below of dependent claim 40
which applies here and is incorporated by reference.)
Appellant also argues that Sato does not teach claim 19 elements (e)(i)
to (e)(iii), referring to arguments stated with respect to claim 1 elements
(g)(i) to (g)(iii) in Section B3(vii) of the Brief. (Br. 67-68.) In particular,
with respect to claim 1, step g(i), and presumably, claim 19, step (e)(i),
Appellant argues that Sato’s Figure 5, step 501 does not constitute
addressing information of the second user, the person to be called, as found
by the Examiner, because Sato’s step 501 pertains to storing the number of
the dialing party, the first user. (Br. 45.)
In a related argument, Appellant also argues with respect to claim 1,
element (g), that the word “thereby” “requires sub-element (iii) to follow
sub-elements (i) and (ii). (Br. 46; accord Br. 67.) According to Appellant,
the Examiner explains how sub-element (iii) follows sub-elements (i) and
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(ii). (Br. 46.) That is, according to Appellant, with respect to claim 1, and
by analogy, claim 19, steps e(i) to (iii), the Examiner explains that:
even if the claim were interpreted as requiring the retrieval of
addressing information [to] precede the real-time
communication . . . FIG 5 at step 5501 [sic S501) discloses the
retrieval of address information that precedes the generation of
the call reception sound at step 5508 [sic S508], thus preceding
the completion of the call and the real-time human interaction
which follows.”
(Id.; accord Ans. 40).
Sato’s Figure 5 indicates that the Examiner’s finding is supported
under a broad reasonable interpretation of claim 19. Step S508,
“GENERATE RECEPTION SOUND,” follows step S501, and reasonably
corresponds to at least one notification of communication to both users,
thereby satisfying step e(iii) of claim 19. (Presenting an image constitutes
another (see S1; Sato Fig. 5).) A connection corresponding to claim element
(ii) necessarily precedes the notification of the connection.
The addressing step e(i), i.e., retrieval of the second user (call
recipient) telephone number, does not occur explicitly at step 501, as
Appellant argues, because this step in Sato corresponds to retrieving the
addressing information of the first user, i.e., the caller in Sato. (Br. 45.)
However, the phrase “necessary addressing information of the second user”
in element e(i) is broad enough to read on any second user address
information “necessary;” i.e., necessary to initiate a call, to send the first
party image to the display of the second user, or to address the second user’s
CPU, ROM, etc. In other words, this second user address information in
Sato must be retrieved to connect to the second user’s computer telephone:
to initiate the call connection, to notify the second user of the call (by
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presenting the image of the first user at the display address of the second
user), and to communicate with the CPU, the ROM, etc., thus establishing a
causal relationship. (See S1.)
Hence, even if the second user (call recipient) address retrieval does
not occur explicitly in step 501 of Sato’s Figure 5, it must occur, else Sato’s
system could not function as intended. More simply, these disputed claim
19 elements simply correspond to a routine program controlling: e(i), the
retrieval of a second user address information (e.g., the telephone, CPU,
display, etc. addresses implicit or suggested in the computer system, are
required to receive an image and/or call); e(ii), a connection and “thereby;”
e(iii), a notification to the second user of an incoming call according to
registered service capabilities (which in Sato, includes audio
communication, image information, telephone number display, etc.). This
normal call routine procedure is at least amply suggested, if not disclosed,
by the ISDN system of Sato, as further supplemented by Ahuja.5

5 Under the Examiner’s alternative rationale, this “necessary addressing
information of the second user” constitutes nonfunctional descriptive
material. (Ans. 43) In response, Appellant argues that the addressing
information is functional because it is required to establish a connection.
(See Br. 51.) However, claim 19 does not have any implicit or explicit
causal relationship between elements e(i) (address retrieval) and e(2)
(connection), because the address information need not be for a connection
between the two users (i.e., as explained supra, it could relate to the display
address of the second user’s phone, the CPU address, the ROM address,
etc.). While Appellant also points to the “thereby” term in a related claim 1
clauses (g)(ii) (see Br. 46), even if that same term establishes a causal
relationship between claim 19 elements e(ii) and e(iii), it does not establish
one between elements e(i) and e(ii).
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With further respect to claim 19, step e(iii), Appellant also argues that
“Sato’s telephone number is not a register of ‘service capabilities’.” (Br. 68
(emphasis and underlining omitted.) This claim element requires that “the
system is further configured to register the service capabilities for each user
and to establish communications between users based on the registered
service capabilities.” The Examiner relies on the listed telephone numbers
and images such as those stored in Figure 3, noting that the ‘093 patent does
not define the service capabilities. (Ans. 42.) The listing of a number and a
corresponding image associated with the number, as Sato’s Figure 3 depicts,
satisfies the disputed claim requirement, because as briefly indicated supra,
Sato’s system registers users which receive audio communication, the
dialer’s telephone number, and the dialer’s image, “to establish
communications based on the registered service capabilities,” as element
e(iii) requires.
Sato’s system also at least suggests a capability for a text message
service where data, voice, and images are disclosed as discussed further with
respect to claim 20 below. (See S3, S4.) And in addition to what Sato’s
Figure 3 discloses or suggests, the whole telephone “system” necessarily “is
configured to register” the service capability of each user, or same would
have been obvious, because otherwise, the system could not provide the
various capabilities and bill the customer appropriately. (See S5 (user
contracts may include a notification service).)
Appellant also argues that the words “in response” in claim 19 require
a connection between elements d(ii) and (e)(i). (Br. 68.) But Appellant does
not explicitly argue that the combination does not teach or suggest the signal
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of claim 19, step d. In any event, step d corresponds to a first (dialing) user
simply selecting a displayed second user identifier to create a calling signal
in order to call the second user. Ahuja discloses “CALL BY NAME,”
“ADD,” and “DROP” buttons with a display of users suggesting such a
capability for a first user to select another user to call. (A3.) The “CALL
BY NAME” button implicitly suggests a previous display of the user
identifier (name) followed by a signal in response thereto to initiate the call
routine, suggesting claim step d, followed by, in response to that signal, the
normal call routine described supra in Sato with respect to step e. (See A3.)
Therefore, the combined teachings satisfy the recited connection between
the claim elements d(ii) and e(i).
In an argument against the combinability of Sato and Ahuja,
Appellant asserts that it would not have been obvious to add Ahuja’s servers
to Sato’s telephone system as required to satisfy claim 19 elements (b) and
(c). (Br. 57-60.) Appellant reasons in part that Sato’s simple telephone
(without an alphanumeric keyboard) could not support Ahuja’s servers and
application programs. (Br. 58.) To the contrary, Sato discloses a CPU,
ROM, RAM, and multiple interface units as part of the computer telephone.
(S1.) Ahuja suggests modifying such a computer based telephone system to
include more software and/or hardware including servers to facilitate the
real-time exchange of application programs and data during a virtual
meeting, as the Examiner reasoned. (See Ans. 6; A1-A4.)
Appellant also argues that Sato’s depicted keypad at Figure 2 only
shows numeric keys, thereby precluding the suggested modification by a
more complicated system with Ahuja. (Br. 60.) This argument and related
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arguments are unavailing because they incorrectly presume skilled artisans
would not have modified Sato’s keypad to accommodate the server
modifications. Further, Sato also suggests other generic keypads to be
employed with the disclosed computer based telephone system. (S1, S3).
The references suggest ready modification of the necessary keys or controls,
where Sato discloses a computer multimedia (voice, data, and image) system
(S1–S5), and Ahuja similarly discloses a multimedia (voice, data, and
image) system with numerous controls (A2, A3).
Appellant’s general argument that Sato does not teach “all the claim
elements in independent claim 19 and certain of the dependent claims” does
not satisfy Appellant’s burden of explaining which of the numerous
elements are lacking in Sato. (Br. 66-67.) Appellant’s related arguments
allege a failure by the Examiner to properly consider certain “Graham
factors.” (Br. 55, 54-57). These arguments do not assert what elements are
missing from the prior art combination and generally assert a lack of a clear
articulation by the Examiner in making the combination. Such generic
arguments fail to point to which statements by the Examiner lack a clear
articulation and are therefore unpersuasive.
With respect to claim 19 and certain other claims discussed below, the
Examiner does provide sufficient reasons with supporting factual
underpinnings (including the scope and content of the prior art, the claim
differences, and the level of skill as indicated by the references) to support
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the conclusion that the combination would have been obvious to modify
Sato.6
For example, the Examiner partly bases the rejection of claim 19 on
the rationale of configuring “each telephone set as a server so as to support
additional inter-communicating applications programs as taught by Ahuja.”
(Br. 55 (quoting the Examiner’s rationale).) As the rejection implies, Ahuja
specifically teaches adding these applications (which use servers) to
multimedia telephone conferencing systems to facilitate real-time meetings
(A1-A4), thereby suggesting a modification to Sato’s multimedia computer
telephone system. As Appellant acknowledges, the Examiner also relies on
the fact that similar ISDN networks are employed in Sato and Ahuja. (Br.
58.) While Appellant characterizes these statements as conclusory because
“[n]o reasons for obviousness are given” (Br. 55), the statements provide
sufficient reasons – arranging known server and application elements to
yield no more than one would expect, or applying known techniques to a
prior art system ready for a virtual meeting improvement, all based on
common knowledge by skilled artisans in the computer telephone
conferencing arts.
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”

6 See In re Oelrich, 579 F.2d 86, 91 (CCPA 1978) (“the PTO usually must
evaluate both the scope and content of the prior art and the level of ordinary
skill solely on the cold words of the literature”); In re GPAC Inc., 57 F.3d
1573, 1579 (Fed. Cir. 1995) (Board did not err in adopting the approach that
the level of skill in the art was best determined by the references of record).
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KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007)(citation omitted).
In “difficult . . . cases . . . the claimed subject matter may involve more than
the . . . mere application of a known technique to a piece of prior art ready
for the improvement.” Id. “‘Our suggestion test is in actuality quite flexible
and not only permits, but requires, consideration of common knowledge and
common sense.’” Id. at 421 (citation omitted). As such, Appellant’s
arguments, characterizing Sato as disclosing a telephone and concluding that
there is no logical reason to add any server software, or a single network,
(Br. 54-60), are unavailing.
For the foregoing reasons, the Examiner’s rejection of claim 19, and
claims 23-25, which were not separately argued, is sustained.
Claims 20, 27, and 28
Claim 20 depends from claim 19 and recites that “the system is
configured to allow communications including real-time text displayed on
the displays associated with the first and second users.” The Examiner relies
on the message display unit 1021 in Figure 10 with respect to a similar
limitation in claim 1. (Ans. 12-13.) Appellant asserts that Figure 10 only
displays a “numerical-only phone number. . . . [which] is certainly not real-
time…text-messages between users.” (Br. 46-47.) This assertion is
unavailing. The window 1021 refers to a “MESSAGE DISPLAY UNIT,”
and even though Sato indicates that the system does display the calling party
number in that window as Appellant argues (id.), skilled artisans would have
recognized that the message display unit is not limited solely to a numerical
display (assuming arguendo numbers do not satisfy the claim), where the
display unit is also generically described as “for displaying a message,” as
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Appellant also notes (id.). Thus, Sato at least suggests, if not discloses, real
time text-messages via the use of a generic keyboard. (See S3.) And as
discussed supra with respect to claim 19, Ahuja’s system suggests
modifying Sato’s system to include different forms of real-time multimedia,
including a text editor, to facilitate a virtual meeting, thereby suggesting
text. (A1, A2.) Also, Sato discloses that sending of text was known at the
time of the invention. (S2.)
For the foregoing reasons, the Examiner’s rejection of claim 20, and
dependent claims 27 and 28 which were not separately argued, is sustained.
Claim 21
Appellant argues that “Sato in view of Ahuja ’90 does not teach how
a list is displayed as a list,” relying on “the same reasons stated with respect
to claim 1f in Section B3(vii).” (Br. 68.) On one hand, the Examiner relies
on either a single user or a saved list of images in Sato’s Figure 3 to
demonstrate that Sato teaches the list for the claim 1f limitation. (Ans. 7-8.)
In addition, with respect to the similar claim 21 limitation, the Examiner
relies on the combination of Sato, Ahuja, and Inga, finding that Ahuja
disclose a list of displayed users and that Inga teaches scrolling of images
(i.e., those in a list.) (Ans. 34; accord A3 (Figure 1 user images in list
form).) Appellant does not address these findings concerning Ahuja and
Inga, but focuses on Sato. (See Br. 41-45; 68.) Therefore, the argument that
the combination fails to suggest claim 21 is unconvincing.
For the foregoing reasons, the Examiner’s rejection of claim 21 is
sustained.

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Claims 22 and 36
Claim 22 depends from claim 21 and recites “wherein the system, is
configured to indicate to a user whether another user is not connected to a
network.” The Examiner reasons that the mere lack of displayed
information for a particular user would be indicative that the particular user
is not logged on. (Ans. 41.) Appellant’s argues that not being displayed
does not necessarily indicate that a user is not connected because that user
could be connected to another user on the system. (Br. 48.) Appellant’s
argument is convincing.
For the foregoing reasons, the Examiner’s rejection of claim 22 and
claim 36 which depends therefrom, will not be sustained.
Claim 26
Claim 26 recites that the system is configured to allow the first user to
select and add a new user to an existing communication. The Examiner
reasons that “the action of placing a new call by one single user would
correspond to adding a new user to an existing communication.” (Ans. 43.)
Appellant argues that the claim requires “adding a new user to that existing
interparty communication.” (Br. 50.) Appellant’s claim interpretation is
sound. Appellant also asserts that Ahuja does not cure the asserted
deficiencies of Sato. (Br. 50.)
Contrary to this latter argument, Figure 1 of Ahuja prominently
depicts a display of buttons “ADD” and “DROP,” along with images of
current users in a virtual meeting. (A3.) As noted supra, the Examiner
relies on Figure 1 of Ahuja to reject independent claim 21, from which claim
26 depends, finding a disclosure there of a graphical representation and list
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of virtual meeting participants. (Ans. 34.) As such, that finding of a list in
Ahuja implicitly applies to dependent claim 26.
And contrary to Appellant’s argument asserting a deficiency in the
combination, Figure 1 of Ahuja suggests dropping and adding users to
existing teleconferencing meetings. In other words, it would have been
obvious to modify the system of Sato to include adding parties to an existing
teleconference as suggested by Ahuja, where Sato also discloses a telephone
system, in order to save time and promote efficiency by only adding parties
to a virtual meeting as needed.
Based on the foregoing discussion, the rejection of claim 26 will be
sustained.
Claim 40
Claim 40 depends from claim 19 and requires the location information
to include address information. The location information referenced in
claim 40 refers to claim element 19(c) which recites service records each
including an “associated location of at least one client program associated
with the communication device that the users used to connect to the
networks.” Thus, this associated address of a program which is located
somewhere “associated with the communication device that the users used to
connect to the networks” is a broad term.
Appellant’s arguments for claim 40 rely on arguments presented for
claim 38. (Br. 69.) Appellant argues that “suffice to say . . . a phone
number does not include address information as to where the user has logged
in.” (Br. 51.) Like the argument presented for claim 19(c), this argument is
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not commensurate in scope with claim 40 which does not recite any log in
requirement.
Thus, it is not clear what Appellant argues with respect to claim 40,
and accordingly, the argument fails. “The problem in this case is that the
appellants failed to make their intended meaning explicitly clear.” Morris,
127 F.3d at 1056 (“It is the applicant’s burden to precisely define their
invention, not the PTO’s.”).
In addition, the Figure 3 depicted record of Sato’s phone numbers and
images listed in the memories of the computer phone servers (i.e., servers
according to Ahuja’s modification), reasonably correspond to the users’
identifications and an associated location address of at least one client
program used by the CPUs in the phones which Sato’s users employ to
connect to the system, as required by claim 40. (See Sato, Fig. 3; S1; see
also Ans. 6-7, 11, 14-15.) The connecting telephone number in a computer
telephone system at least suggests a correspondence to the telephone port
address and CPU address therein, any or all of which corresponds to the
program address. The address location of a program must be known simply
to use the program, and server records indicating a user location for billing
would have been obvious. As such, any difference between the Sato service
record and the claim 40 service record information, e.g., a telephone number
indicating an system entry port address versus the address of a program
which processes or stores those numbers, constitutes an obvious variant or
one based on nonfunctional descriptive material, because the claimed system
does not change how it operates based on any claimed difference over Sato’s
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system. That is, the claimed system and Sato’s system each store data
corresponding to a location at which a user connected to each system.
Based on the foregoing discussion, the rejection of claim 40 will be
sustained.
Claim 47
Claim 47 depends from and requires the system of claim 20 to be
configured to allow a user to block an incoming video while a text message
is displayed. The Examiner reasons that Sato’s system shows a “permanent
text display area 1021 that exists at all times, thus always enabling text
communication since it is separate from the video monitor.” (Ans. 44.)
Appellant reasons that Sato does not teach anywhere that the text is
displayed permanently. (Br. 52.) Appellant’s argument is persuasive; the
Examiner provides insufficient evidence for the assertion.
Based on the foregoing discussion, the rejection of claim 47 will not
be sustained.
CONCLUSION
The Examiner erred in finding that the combination of Sato and Ahuja
renders obvious a system capable of creating a record of log-ins as set forth
in claim 1, and a system capable of receiving and blocking video
information while maintaining a display of text as set forth in claim 47; and
that the combination of Sato, Ahuja, and Inga renders obvious a system
configured to indicate whether another user is not connected to a network as
recited in claim 22.
The Examiner did not err in finding that the combination of Sato and
Ahuja renders obvious a system capable of tracking address information as
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recited claim 40; that the combination of Sato, Ahuja, and Connolly renders
obvious several argued claim limitations in claim 19; and that the
combination of Sato, Ahuja, and Inga renders obvious the system real-time
text capability as recited in claim 20, the system list capability as recited in
claim 21, and a system configured to add a new user to an existing
communication as recited in claim 26.
DECISION
The Examiner’s decision to reject claims 1-18, 22, 29-39, 41-49 is
reversed.
The Examiner’s decision to reject claims 19-21, 23-28, and 40 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-IN-PART

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