Ex Parte Burckart et alDownload PDFPatent Trial and Appeal BoardMay 29, 201310733658 (P.T.A.B. May. 29, 2013) 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. 10/733,658 12/11/2003 Erik J. Burckart LOT920030032US1 (017) 8852 46321 7590 05/29/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 EXAMINER LONG, ANDREA NATAE ART UNIT PAPER NUMBER 2175 MAIL DATE DELIVERY MODE 05/29/2013 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 ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC J. BURCKART, JAMES PATRICK GALVIN, JR., and BRIAN L. PULITO ____________ Appeal 2010-006664 Application 10/733,658 Technology Center 2100 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-006664 Application 10/733,658 2 Appellants have requested a rehearing under 37 C.F.R. § 41.52 on May 13, 2013 (“Request”) from our Decision on Appeal mailed March 12, 2013 (“Decision”), wherein we affirmed the obviousness rejections of claims 1-17. See Decision 9. Specifically, the original panel affirmed the following three rejections made by the Examiner (see Decision 3-4 and 8-9): (1) The rejection of claims 1-3, 7- 9, and 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Schrodi and Hinchliffe; (2) The rejection of claims 4, 5, 10, 11, and 14 under 35 U.S.C. § 103(a) as being unpatentable over Mukherjee; and (3) The rejection of claims 6, 12, and 15-17 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Mukherjee and Hinchliffe. Appellants have requested a rehearing of the decision of the original panel affirming the obviousness rejection of claims 1-3, 7-9, and 13 over the combination of Schrodi and Hinchliffe. Appellants have not requested a rehearing of the decision of the original panel affirming the obviousness rejections of either (i) claims 4, 5, 10, 11, and 14 over Mukherjee; and/or (ii) claims 6, 12, and 15-17 over the combination of Mukherjee and Hinchliffe. Accordingly, we only reconsider our Decision with regard to the specifically contested issues in the Request relating to our affirmance of the Examiner’s rejection of claims 1-3, 7-9, and 13 under § 103(a) over the combination of Schrodi and Hinchliffe. Exemplary Claim Exemplary independent claim 1 under appeal reads as follows (emphasis added): Appeal 2010-006664 Application 10/733,658 3 1. A method of conducting electronic meetings, comprising the steps of: defining one or more groups of participants in an electronic meeting; assigning a relative priority for each group, the relative priority for each group being unique to said group; generating a meeting event for the electronic meeting; and triggering logic to provide the meeting event to the groups in a sequence ordered by the relative priority for each group. Appellants’ Contentions Appellants argue that the Board has overlooked “certain arguments” in rendering its decision. Request 2. More specifically, Appellants argue that (i) the Examiner improperly compared Hinchliffe’s groups of computers to the claimed groups of participants at an e-meeting (Request 2-4), and (ii) the Board overlooked the Examiner’s failure to rebut the Appellants’ contention that “groups of computers” is not the claimed “groups of participants” at an e-meeting (Request 4-5). Appellants also assert in the Request that the Examiner relied solely on Hinchliffe’s paragraph [0014] as teaching priorities for groups of participants in an e-meeting (Request 3). Analysis We have reconsidered our decision of March 12, 2013, in light of Appellants’ contentions in the Request, and we find no errors therein. We, therefore, decline to change our prior decision with respect to the Appeal 2010-006664 Application 10/733,658 4 obviousness rejection of claims 1-3, 7-9, and 13 over the combination of Schrodi and Hinchliffe for the following reasons.1 Appellants’ claims 1 and 7 disclose a method of (claim 1), and a set of instructions for (claim 7) conducting electronic meetings, comprising the steps of “defining one or more groups of participants in an electronic meeting.” Claim 13 recites similar subject matter in a system format. In our original Decision, we agreed with the Examiner (Ans. 4-8 and 16-17) that Hinchliffe’s teaching of breaking the plurality of computers down into groups (Hinchliffe, ¶ [0014]) relates to “defining one or more groups of participants,” as recited in independent claims 1, 7, and 13 (Decision 6, adopting the Examiner’s findings and reasons, and concurring with the Examiner’s conclusions regarding claims 1-3, 7-9, and 13). With regard to Appellants’ argument (Request 3-4) that Hinchliffe’s “groups of computers” are not the same as the claimed “groups of participants,” we agreed with the Examiner (Ans. 16-17) that it is reasonable for one skilled in the art to conclude that the groups of computers include some form of user participation, especially when taken in combination with the teachings of Schrodi (Decision 6). Because the Examiner combined (1) Schrodi’s electronic meeting features with (2) Hinchliffe’s group prioritization features (see Ans. 4), as 1 Notably, we do not reconsider our decision affirming the remaining two obviousness rejections made by the Examiner in the Answer, namely (i) claims 4, 5, 10, 11, and 14 over Mukherjee; and (ii) claims 6, 12, and 15-17 over the combination of Mukherjee and Hinchliffe. These two remaining rejections rely on Mukherjee as a base reference, and Appellants have neither disputed Mukherjee nor contended in the Request that the Board made any misapprehensions or overlooked any facts in reaching its Decision affirming claims 4-6, 10-12, and 14-17. Appeal 2010-006664 Application 10/733,658 5 well as (3) the knowledge of a person of ordinary skill in the art that groups of computers include forms of user participation (Ans. 16-17), we are not persuaded by Appellants’ contention in the Request that the Examiner relied solely on Hinchliffe’s paragraph [0014] as teaching priorities for groups of participants in an e-meeting (Request 3). To the contrary, the Examiner relied on Hinchliffe’s paragraph [0014] (see Ans. 4) in combination with the knowledge of a person of ordinary skill in the art concerning user participation in the presence of groups of computers in rejecting claims 1-3, 7-9, and 13 (Ans. 16-17). With regard to Appellants’ argument (Request 4) that the Examiner has not shown evidentiary support to relate Hinchliffe’s “groups of computers” to claimed “groups of participants,” we agree with the Examiner’s interpretation (Ans. 16-17) that it is reasonable for one skilled in the art to conclude that the groups of computers of Hinchliffe include some form of user participation, especially when taken in combination with the teachings of Schrodi, who teaches conserving network resources by restricting traffic and efficiently transmitting prioritized data by prioritizing data traffic for Web conferences and multimedia applications (Abs.; ¶ [0046]), which are performed by conference/multimedia application participants. We further note that Appellants have merely provided conclusory statements unsupported by factual evidence as to why the Examiner’s position regarding Hinchliffe’s teaching or suggestion of “participants” is not valid. Finally, Appellants have not rebutted the Examiner’s cogent explanation found at pages 16-17 of the Answer as to why/how one of ordinary skill in the art, looking at the combined teachings and suggestions Appeal 2010-006664 Application 10/733,658 6 of Schrodi and Hinchliffe, would have concluded that Hinchliffe’s groups of computers include user participation, and thus groups of participants as recited in independent claims 1, 7, and 13 (see generally Reply Br. 2-4). With regard to Appellants’ argument that the Board overlooked the Examiner’s failure to rebut the Appellants’ contentions regarding Hinchliffe and the “participant” limitation (Request 4-5), we disagree, because the original Decision of the Board adopted “(1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 3-19)” (Decision 6), including the Examiner’s rebuttal in the Answer (Ans. 16-17). Because independent claims 1, 7, and 13 each recite “one or more groups of participants in an electronic meeting,” without specifying whether or not the groups of participants are the same or different, claims 1, 7, and 13 do not require providing a meeting event to “different” groups of participants in a sequence based on the relative priority of each group. In view of the foregoing, Appellants’ argument with regard to different group participants is not commensurate in scope with claims 1, 7, and 13, and is therefore not persuasive (see Request 3). Appellants’ Request for Rehearing has been granted to the extent that our decision has been reconsidered, but such request is denied with respect to making any modifications to the decision. Appeal 2010-006664 Application 10/733,658 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136 (a)(1)(iv). REHEARING DENIED Vsh Copy with citationCopy as parenthetical citation