Ex Parte Gunasekar et al

Patent Trial and Appeal Board

Dec 19, 2016

13348402 (P.T.A.B. Dec. 19, 2016)

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.
13/348,402 01/11/2012 Guna DURAISAMY GUNASEKAR 130170-US 6179
22242 7590 12/19/2016
FITCH EVEN TAB IN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
HO, RUAY L
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
12/19/2016 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 GUNA DURAISAMY GUNASEKAR,
MAYEL ESPINO, RICHARD G. MOORE,
MICHAEL B. FREEMAN, FRANK A. MCKIEL JR., and
PAUL A. ROBERTS
Appeal 2016-003183
Application 13/348,402
Technology Center 2100
Before DEBRA K. STEPHENS, JOSEPH P. LENTIVECH,
DAVID J. CUTITTAII, Administrative Patent Judges.
DEBRA K. STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20 and 23. Claims 21 and 22 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-003183
Application 13/348,402
STATEMENT OF THE INVENTION
According to Appellants, the claims are directed to a method and
system for providing conferencing services in which textual information is
received for display during a conference session with multiple participants,
some of whom need language assistance for the textual information
(Abstract). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
at one or more processing devices:
determining that textual information of a conference
transmitted over a network includes a predetermined term,
the predetermined term having associated supplemental
information that includes a definition of the predetermined
term;
marking the textual information to display with the textual
information to notify a plurality of participants of the
conference that the supplemental information is available
based on the determination; and
forwarding the textual information having the marking
over the network to the one or more participants for
presentation during the conference.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smiga US 2003/0167279 A1 Sept. 4, 2003
Montet US 2003/0220972 A1 Nov. 27, 2003
Levin US 2004/0102957 A1 May 27, 2004
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Application 13/348,402
Yang US 7,353,252 B1 Apr. 1,2008
REJECTIONS
Claims 1—6, 8, 9, 11—16, 18, 19, and 23 stand rejected under 35 U.S.C.
§103 (a) as being unpatentable over Montet, Levin, and Yang (Final Act. A—
7).
Claims 7, 10, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Montet, Levin, Yang, and Smiga (Final Act. 8—9).
ISSUE
35 U.S.C. § 103(a): Claims 1—6, 8, 9, 11—16, 18, 19, and23
Appellants contend their invention as recited in claims 1—6, 8, 9, 11—
16, 18, 19, and 23, is not obvious over Montet, Levin, and Yang (App. Br.
7—17). The issue presented by the arguments is:
Issue: Does the combination of Montet, Levin, and Yang teach,
suggest, or otherwise render obvious “marking the textual information to
display with the textual information to notify a plurality of participants of
the conference that the supplemental information is available based on the
determination,” as recited in claim 1?
ANALYSIS
Appellants argue the combination of references fails to teach “a
method that marks textual information so that the mark is displayed with the
textual information to notify conference participants” (App. Br. 7).
According to Appellants, the Examiner “splits the recitation in half’ and
relies on Yang for teaching “marking the textual information to display with
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Application 13/348,402
the textual information to notify a plurality of participants of the conference”
and Levin to teach “that supplemental information is available based on the
determination” (id.). However, Appellants asserts, the “marking” recited in
claim 1, “is to notify the participants ‘that the supplemental information is
available’” (id. at 8).
Yang teaches a system for electronic file collaboration among
multiple users (Yang, Abstract). Documents may be marked-up, or
otherwise edited (id.). Yang further teaches multi-byte character recognition
display implemented as input and standard Microsoft™ text display API
(Application Program Interface) (Yang, 12:4—7). “[The] original text format
remain intact in saved mark-up text” (id. at 12:7—8). Because the
collaboration application markup text does not support language software, a
common language/font (e.g., English) is recommended for all markup texts
(id. at 12: 8—20). Thus, we find Yang teaches, suggests, or otherwise
renders obvious “marking the textual information to display with the textual
information.” Although Appellants point to various sections of their
Specification to be used in interpreting the term “notify” (Reply Br. 4—5),
Appellants have not identified an explicit definition in the Specification, nor
proffered sufficient evidence or argument to persuade us of error in the
Examiner’s interpretation. Thus, Appellants have not persuaded us Yang’s
markup fails to teach notifying the plurality of participants of the conference
of edits (mark-ups) to the document.
Appellants further argue Levin does not teach notifying participants of
a conference that supplemental information is available; rather, Levin
teaches a user can define a sub-language dictionary by identifying a
preferred set of terms and usages (App. Br. 10). According to Appellants,
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Levin teaches “receiving user inputs to automatically translate electronic
communications” (Reply Br. 5). Levin teaches setting up a sub-language
dictionary that may be used to translate the textual portion of communication
to another language (Levin H 37, 42). The Examiner finds Levin “notifies”
because the information is displayed and thus, teaches the recited “notifying
participants that the supplemental information is available” (Ans. 10—11).
We agree Levin teaches “supplemental information is available based
upon a determination”; however, the Examiner has not explained with
sufficient particularity why an ordinarily skilled artisan would have
combined the teachings and suggestions of Levin and Yang. Indeed, the
Examiner has identified teachings for each portion of the recited limitation
but not sufficiently explained how the teachings and suggestions should be
combined to notify participants that supplemental information is available,
or why such a combination would have been obvious to an ordinarily skilled
artisan (see Final Act. 5).
As such, Appellants have persuaded us the Examiner has not shown
an ordinarily skilled artisan would have found the combination of Montet,
Levin, and Yang teaches, suggests, or otherwise renders obvious “marking
the textual information to display with the textual information to notify a
plurality of participants of the conference that the supplemental information
is available based on the determination,” as recited in independent claim 1
and commensurately recited independent claims 11 and 23. Dependent
claims 6, 8, 9, 12—16, 18, and 19 stand with their respective independent
claims.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments.
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Therefore, we cannot sustain the rejection of claims 1—6, 8, 9, 11—16, 18, 19,
and 23 under 35 U.S.C. § 103(a) for obviousness over Montet, Levin, and
Yang.
35 U.S.C. § 103(a): Claims 7, 10, 17, and20
Claims 7, 10, 17, and 20 depend from independent claims 1 and 11.
The Examiner has not shown Smiga cures the deficiencies of Montet, Levin,
and Yang. For the reasons set forth above, these claims stand with
independent claim 1.
Therefore, we cannot sustain the rejection of claims 7, 10, 17, and 20
under 35 U.S.C. § 103(a) for obviousness over Montet, Levin, Yang, and
Smiga.
DECISION
The Examiner’s rejection of claims 1—6, 8, 9, 11—16, 18, 19, and 23
under 35 U.S.C. § 103(a) as being unpatentable over Montet, Levin, and
Yang is affirmed.
The Examiner’s rejection of claims 7, 10, 17, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Montet, Levin, Yang, and Smiga is
affirmed.
REVERSED
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