Ex Parte Ditzik

Board of Patent Appeals and Interferences

May 21, 2012

11315318 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD J. DITZIK
____________

Appeal 2010-007934
Application 11/315,318
Technology Center 2600
____________

Before HOWARD B. BLANKENSHIP, MAHSHID D. SAADAT, and
THU A. DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, and 4-20, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).1

1 According to Appellant, the instant application is a “Division” of
Application No. 11/023,361. A decision on appeal (Appeal 2009-014097) in
the related application mailed December 2, 2011, with Request for
Rehearing denied May 2, 2012.
Appeal 2010-007934
Application 11/315, 318

2
We affirm, but designate our affirmance of the rejections over the
prior art as new grounds of rejection under 37 C.F.R. § 41.50(b).

Representative Claim
1. A method for information sharing on a personal
computer comprising the following steps in any order:

a) executing a single unitary computer conferencing program,
said executing being in cooperation with a personal computer
operating system and an application program setup, wherein the
personal computer operating system, the application program setup,
and the single unitary computer conferencing program are configured
to initialize substantially sequential, with the personal computer
operating system initializing first, the application program setup
initializing after the personal computer operating system, and the
single unitary computer conferencing program initializing after the
personal computer operating system and the application program
setup;

b) communicating data under control of the personal computer
operating system to and from a second roughly equivalent personal
computer at a remote location via an external communications
network;

c) conferring information to and from the second personal
computer for computer conferencing, in cooperation with the
communicating data step, using the single unitary computer
conferencing program and an external communication function, the
external communication function being based on the external
communications network; and

d) adapting said personal computer system for multiple data
input devices.

Appeal 2010-007934
Application 11/315, 318

3
Examiner’s Rejections
Claims 12-17 and 20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 2, and 6-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakayama2 (US 5,280,583)3 and Jain (US 6,357,000 B1).4
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakayama, Jain, and Gibbs (US Re. 35,050).

2 An examiner’s rejection over Nakayama was applied to claims in
grandparent Application No. 08/487,778, and appealed to the Board for
review. The Board’s decision was subsequently appealed to our reviewing
court. Ex parte Richard J. Ditzik, Appeal No. 2001-2313 (BPAI 2003); In
re Ditzik, 112 Fed. Appx. 59 (Fed. Cir. 2004) (Affirmed Rule 36); In re
Ditzik, 2004 U.S. App. LEXIS 27470 (Fed. Cir. 2004) (Rehearing and
Rehearing en banc denied).

3 Nakayama issued January 18, 1994, with an effective filing date of May
12, 1989. The instant application was filed in the USPTO on December 23,
2005. Should a patent issue from the instant application, the patent grant
would be subject to a 20 year term from its earliest claim for priority under
35 U.S.C. § 120, in accordance with 35 U.S.C. § 154(a)(2). The instant
application claims priority to a chain of applications under 35 U.S.C. § 120,
to an application filed July 3, 1989.

4 Jain issued March 12, 2002, with an effective filing date of January 29,
1993. The Examiner determined that the instant claims are entitled to an
effective filing date of June 7, 1995, being supported by new matter filed in
grandparent Application No. 08/487,778. See Non-final Rejection mailed
Dec. 13, 2007 at 2-3. Appellant amended the Specification (Jan. 24, 2008)
to specify that grandparent Application No. 08/487,778, filed June 7, 1995,
is a “continuation-in-part” of Application No. 08/280,148. The USPTO
database, however, has not been properly updated and contains the
previously claimed “divisional” status in the chain of priority with respect to
grandparent Application No. 08/487,778.

Appeal 2010-007934
Application 11/315, 318

4
ANALYSIS
35 U.S.C. § 112, First Paragraph, Rejection
One shows “possession” by descriptive means such as words,
structures, figures, diagrams, and formulas that fully set forth the claimed
invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997). It is not sufficient for purposes of the written description
requirement that the disclosure, when combined with the knowledge in the
art, would lead one to speculate as to modifications that the inventor might
have envisioned, but failed to disclose. Id.
The Examiner rejects claims 12-17 and 20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner finds that that the disclosure does not describe the step of
“providing a selectable option to initialize and load one or more application
programs and the single unitary computer conferencing program in any
order” as recited in representative claim 12. Appellant submits that
Specification paragraph [037] and instant Figure 4B provide support for the
limitations now claimed.
The “selectable option” of claim 12 appears to refer to a computer
interface associated with the “Application Program(s) Set-Up” rectangle
depicted in Figure 4B. However, the drawing (and the written description)
does not indicate that one or more application programs (102, 104, 108, 110)
and the conferencing program (106) can be loaded “in any order.” Figure
4B suggests that the user can control which application programs are to be
loaded with the conferencing program; for example, the user may select
application programs 102 and 104 to be loaded with conferencing program
106. However, there is inadequate support for the user having the capability
Appeal 2010-007934
Application 11/315, 318

5
to control the order, to the extent of “in any order,” in which the programs
are to be loaded.
We therefore are not persuaded that the Examiner erred in the finding
that claim 12 lacks adequate written description support. Appellant’s
remarks in support of claims 13, 14, 15, and 20, each of which recites
limitations similar to those of claim 12 and for which Appellant relies on the
same paragraph and Figure of the disclosure for support, are also
unavailing.5 We sustain the § 112, first paragraph, rejection of claims 12-17
and 20 for failing to comply with the written description requirement.

Prior Art Rejections
I. Claims 1 and 2
Appellant contends that Nakayama does not describe a “single
unitary” or “integral” computer conferencing program as recited in claim 1
or claim 2. The argument is principally based on the facts that (1) instant
Figure 4B shows a single rectangle 106 for the “Realtime Tele-Writing
Conferencing Program” and (2) Nakayama’s Figure 5 shows two rectangles
associated with a workstation, which the reference designates an
“Interlocution Control Program” (100A or 100B) and an “Interlocution
Object Program” (120A or 120B). Appellant contends that the computer
conferencing program in the reference cannot be “single unitary” or
“integral” because the software includes both of the “Control Program” and
the “Object Program.”
“The term program, as used here, is equivalent to an algorithm or
routine, implemented in computer software.” Spec. ¶ [035]. The claimed

5 Claims 16 and 17 depend from claims 12 and 13, respectively.
Appeal 2010-007934
Application 11/315, 318

6
“single unitary” or “integral” computer conferencing program thus refers to
a “single unitary” or “integral” software program equivalent to an algorithm
or routine. As the Examiner notes, Figure 5 of Nakayama is a “conceptual
view for illustrating relations between interlocution control programs.”
Nakayama col. 3, ll. 63-65. Nakayama’s Figure 5 does not depict the
algorithm or routine for performing “interlocution,” or data conferencing
(see col. 11, ll. 58-68).
Moreover, the “Interlocution Object Program” described by
Nakayama is an application program, rather than a conferencing program.
The “Interlocution Object Program” is so called because the “interlocution
object” may be, for example, a text document that is edited or a table that is
processed. Nakayama col. 16, ll. 3-10. The “Interlocution Object Program”
is therefore an application program (e.g., a word processing or spreadsheet
program). Data processing within individual windows are executed using
corresponding application programs (e.g., Fig. 5, 130A). When one of the
application programs corresponds to the interlocution (conferencing)
window, however, the application program is called an “interlocution object
program” (e.g., Fig. 5, 120A). Id. at col. 8, ll. 31-37.
The (single rectangle) “Interlocution Control Program” (e.g., Fig. 5,
100A) is a “single unitary” or “integral” computer conferencing program.
Rather than user input going directly to the application program, as normal,
in Nakayama’s system the interlocution control program (100A) fetches the
input from the window management system and transfers the input to the
interlocution object program (application program) (120A), at the same time
sending the input to the corresponding interlocution control program (100B)
on the counterpart work station, which in turns transfers the input to the
Appeal 2010-007934
Application 11/315, 318

7
interlocution object program 120B. Nakayama col. 8, ll. 49-63.
Communication path 80 (Fig. 5) shown between the interlocution object
programs is thus a logical path. Actual data transfer between the work
stations is via path 70, which connects the interlocution control programs.
Id. at col. 8, l. 63 - col. 9, l. 4.
The interlocution control program as described by Nakayama is thus a
“single unitary” or “integral” computer conferencing program as claimed.
However, even if we were to find Appellant’s arguments to the contrary to
be convincing, we fail to see how, for example, the combination of programs
depicted in two rectangles (e.g., 100A, 120A) cannot be considered a “single
unitary” or “integral” computer conferencing program. That is, why the two
“Interlocution” programs together cannot be considered a computer
conferencing program to the extent claimed. It is not fatal to the rejection
that Nakayama may fail to refer to the overall algorithm or routine provided
by the combination of programs as a single unitary or integral “computer
conferencing program,” as anticipation is not an “ipsissimis verbis” test. In
re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Appellant also contends that Nakayama fails to describe the claimed
initialization sequence in the order of the operating system, the application
program setup, and the computer conferencing program. The basis for the
claimed sequence is the flowchart in the Figures: “Boot Operating System”
68 (Fig. 4A), “Application Program(s) Set-Up” 96 (Fig. 4B), and program
106 (Fig. 4B). Appellant’s disclosure places no limitations on what
“initialization” may entail. Further, Appellant’s disclosure does not describe
what an “Application Program(s) Set-Up” (rectangle 96; Fig. 4B) may
require.
Appeal 2010-007934
Application 11/315, 318

8
Nakayama discloses that when a document is selected from the
document list 73 (Fig. 10A), an application program corresponding to the
selected document is activated by the function of the OS (operating system)
90 (Fig. 7). Col. 13, ll. 6-12. The application program setup provided by the
menu (Fig. 10A) thus initializes subsequent to initialization of the operating
system. Nakayama also discloses that selection of a command or icon that
designates the conferencing program results in the operating system
displaying the menu (Fig. 10A) with the “interlocution control menu”
selection 71 that results in another menu (Fig. 10B) from which interlocution
(conferencing) can be selected. Col. 12, ll. 7-29. Nakayama thus describes
a sequence of the operating system initializing first, the application program
setup initializing after the operating system, and the conferencing program
initializing after the operating system and the application program setup.
Nakayama describes an initialization order as claimed.

II. Claims 12 and 20
Instant claim 12 recites providing a selectable option to initialize and
load one or more application programs and “the single unitary” conferencing
program in any order.6 However, Nakayama’s menu (Fig. 10A) provides a
selectable option to initialize and load one or more application programs
(associated with documents in list 73) and the single unitary conferencing
program (via selection 71) in any order. Nakayama col. 12, ll. 7-29; col. 13,

6 A program must be “initialized” when loaded. Appellant’s Specification
(¶¶ [036] - [037]) and Figures 4A and 4B indicate that the required
application program or programs are “loaded into the workstation memory”
(¶ [037]), but do not expressly teach that the programs are in addition
“initialized.”
Appeal 2010-007934
Application 11/315, 318

9
ll. 6-12. Moreover, Nakayama generally discloses that the application
programs and the conferencing program can be initialized and loaded in any
order (e.g., col. 2, ll. 65-67; col. 5, ll. 38-45; col. 8, ll. 15-19, and col. 9, ll.
15-25).
Instant claim 20 recites in addition that the user-selectable option is
provided to “select and initialize memory and I/O devices.”
Nakayama’s Figure 7 shows various programs and data that are stored
in memory 11, such as application programs 130-I to 130-N. Logical screen
memory areas 150-I to 150-M correspond to displayed windows and store
the results of the application program processes. Interchange data file area
160 stores data to be supplied to the other work station. Nakayama col. 10,
ll. 3-20.7 These memory areas are selected and initialized when the
corresponding application and interlocution programs are selected (Fig.
10A). Further, I/O devices (e.g., floppy disks) may be selected and
initialized as a substitute for part of the memory areas. Id at col. 10, ll. 21-
25. Alternatively, telephone selections 72 (Fig. 10A) and 72A (Fig. 10C)
represent I/O devices that are selected and initialized, to the extent claimed,
by a user-selectable option. Id. at col. 12, ll. 7-14, 30-34.

7 Nakayama’s Figure 7 depicts memory area 100 for the interlocution control
program but none for any interlocution object programs. There are no
separate memory areas for the interlocution object programs because those
constitute application programs 130-I to 130-N. See also Nakayama col. 3,
ll. 29-33 (“One interlocution control program can control a plurality of the
interlocution object programs.”).
Appeal 2010-007934
Application 11/315, 318

10
III. Summary/Conclusion
We have considered representative claims 1, 2, 12, and 20 in view of
Appellant’s arguments in response to § 103(a) rejections. See 37 C.F.R.
§ 41.37(c)(1)(vii). The arguments have failed to show patentability over
Nakayama taken alone. We are not persuaded that any claim has been
rejected in error and sustain the Examiner’s § 103(a) rejections. We
designate our affirmance of the rejections over the prior art as new grounds
of rejection (37 C.F.R. § 41.50).

DECISION
The rejection of claims 12-17 and 20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
affirmed.
The Examiner’s rejections of claims 1, 2, and 4-20 under 35 U.S.C.
§ 103(a) are affirmed in what we designate as new grounds of rejection.
With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
Appeal 2010-007934
Application 11/315, 318

11
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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.
§ 41.50(f).

AFFIRMED -- 37 C.F.R. § 41.50(b)
llw