Ex Parte Hankey et al

Patent Trial and Appeal Board

Jun 11, 2013

10961852 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/961,852 10/08/2004 Michael Robert Hankey 1314-002 7272
29973 7590 06/11/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE LLP
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
LI, GUANG W
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
06/11/2013 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 MICHAEL ROBERT HANKEY, ROBERT GARNER,
ERNESTO MORALES, ABE SMILOWITZ,
and BRIAN HOFFMAN
____________

Appeal 2010-011919
Application 10/961,852
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, DENISE M. POTHIER, and
BRUCE R. WINSOR, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4, 5, 7, 9, and 10. Claims 2, 3, 6, and 8 have been
canceled. Br. 2.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Throughout this opinion, we refer to the Appeal Brief (Br.) filed February
26, 2010 and the Examiner’s Answer (Ans.) mailed May 20, 2010.
Appeal 2010-011919
Application 10/961,852

2
Invention
Appellants’ invention relates to a technique for facilitating
interpersonal communications over a network. See Abstract. Illustrative
claim 1 is reproduced below with certain limitations emphasized:
1. A computing system for providing interpersonal communication
over a network, the system including at least one microprocessor in
communication with at least one memory device and the network, the
system further including a server software program adapted to
communicate with a client software program, the server software
program being stored on the memory device and operated by each
microprocessor, the system adapted to:
maintain and control a selectively accessible dating community
web site located on the network;
to selectively allow one or more users to access the dating
community web site through an Internet web browser; and
to enable a primary user to exchange interpersonal data with at
least one pre-selected secondary user through the dating community
web site in substantially real time, the interpersonal data including
interpersonal video data, audio data and text data, the text data
comprising physical and social inclinations of the primary user,
the server software program being in substantially simultaneous
communication with the client software over the network to achieve
substantially real time data communication,
the client software program being an embedded flash application
adapted to operate in conjunction with the Internet web browser
which is viewable on a viewing device and to generate a virtual room
in the viewing device with video and audio of another user in the
virtual room.

The Examiner relies on the following as evidence of unpatentability:
Bricklin US 2002/0116458 A1 Aug. 22, 2002
Megiddo US 6,559,863 B1 May 6, 2003
Knudson US 2003/0167176 A1 Sept. 4, 2003

Appeal 2010-011919
Application 10/961,852

3
The Rejection
Claims 1, 4, 5, 7, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Megiddo, Bricklin, and Knudson. Ans. 3-10.

THE CONTETIONS
Regarding illustrative claim 1, the Examiner finds that Bricklin in
combination with Megiddo teaches a client software program adapted to
generate a virtual room in the viewing device as recited. Ans. 5-7, 13-14.
Additionally, the Examiner finds that the modified Megiddo system in
combination with Knudson teaches the client software program being an
embedded flash application adapted to operate in conjunction with the
Internet web browser that is viewable on a viewing device. Ans. 7-8, 11-13.
Appellants argue that the Examiner failed to find any of the
references either alone or in combination teaches the recited “client software
program” that is an embedded flash application adapted to operate with a
browser and to generate a virtual room in the viewing device. Br. 7-8. As
such, Appellants contend that the references do not yield a predictable result
as recited and as the Examiner asserts. Br. 5, 8.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Megiddo, Bricklin, and Knudson collectively would have taught or
suggested the client software program being an embedded flash application
adapted to operate with a browser and to generate a virtual room in the
viewing device with video and audio of another user in the virtual room?

Appeal 2010-011919
Application 10/961,852

4
ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 1. Appellants assert that Knudson fails to teach the client
software program is adapted to generate a virtual room in the viewing
device. See Br. 7-8. Yet, as noted by the Examiner (Ans. 13-14), the
rejection finds Bricklin in combination with Megiddo teaches a client
software program adapted to generate a virtual room in the viewing device
as recited. Ans. 5-7 (citing Bricklin ¶ 0110; Figs. 19b-c). Appellants
overlook the Examiner’s position concerning Bricklin, a finding which
remains unchallenged on the record.
Moreover, as the Examiner notes and we adopt, combining Knudson’s
teaching with the modified Megiddo system results in a client software
program that is an embedded flash application adapted to operate with the
Internet web browser. See Ans. 7-8, 11-13. Appellants have not contended
that Knudson fails to teach this feature, but rather attack Knudson
individually for failing to teach the client software program is adapted to
generate a virtual room. See Br. 7-8. As stated above, the Examiner relies
on Bricklin for this feature. Ans. 5-7.
The Examiner additionally notes that Knudson teaches using both
video and audio for conferencing. See Ans. 7. Thus, to support an
obviousness conclusion, the Examiner relies on Knudson’s teachings in
combination with the other cited references to teach and suggest a client
software program having an embedded flash application adapted to operate
with the Internet web browser and to generate a virtual room in the viewing
device with video and audio of another user. See Ans. 7-8. Attacking
Knudson individually therefore fails to show nonobviousness where the
Appeal 2010-011919
Application 10/961,852

5
rejection– as is here (see Ans. 3-8) – is based on combination of Megiddo,
Bricklin, and Knudson. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Concerning Appellants’ contention that the Examiner has not
adequately articulated findings as set forth in the Manual of Patent
Examining Procedure (MPEP) § 21432 (Br. 6), we disagree. The Examiner
points out what elements of claim 1 Meggido (e.g., the single reference) are
lacking (see Ans. 5, 7) and includes findings of how the prior art collectively
(Meggido, Bricklin, and Knudson) include each element claimed. See Ans.
3-8. Moreover, “all that is require of the office to meet its prima facie
burden of production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement.” In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). The Examiner has met this burden. See Ans.
3-8. The Examiner has also adequately informed Appellants of the Office’s
position and provided reasons with some rational basis for the combination
of references to support an obviousness conclusion. See Ans. 3-8, 11-13; see
also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 4, 5, 7, 9, and 10 not
separately argued with particularity.

2 Appellants refer to MPEP § 2141. Br. 6. However, we located a similar
sentence in MPEP § 2143 (8th ed., Rev. 9, Aug. 2012). MPEP §2143(A)
states: “Office personnel must articulate the following: a finding that the
prior art included each element claimed, although not necessarily in a single
prior art reference, with the only difference between the claimed invention
and the prior art being the lack of actual combination of the elements in a
single prior art reference . . . .”
Appeal 2010-011919
Application 10/961,852

6
CONCLUSION
The Examiner did not err in rejecting claims 1, 4, 5, 7, 9, and 10 under
§ 103.
The Examiner’s decision rejecting claims 1, 4, 5, 7, 9, and 10 is
affirmed.
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).

AFFIRMED

rwk