Ex Parte Hariton

Patent Trial and Appeal Board

Jun 5, 2017

12939369 (P.T.A.B. Jun. 5, 2017)

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.
12/939,369 11/04/2010 Nicholas T. Hariton HTN-1C 5286
21833 7590 06/07/2017
PRITZKAU PATENT GROUP, LLC
993 GAPTER ROAD
BOULDER, CO 80303
EXAMINER
NICHOLAS, WENDY K
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
06/07/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PPGpatents@comcast.net
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS T. HARITON
Appeal 2017-001476
Application 12/939,369
Technology Center 2100
Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
JEREMY J. CURCURI, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-001476
Application 12/939,369
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—4, 7—10, 13—36, and 38—61. Claims 5, 6, 11, 12, and 37 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Appellants’ invention relates to preparing a presentation that connects
geographically dispersed contributors to a controller through a network to
collaborate preparation of the presentation. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method for providing a multimedia presentation, said
method comprising:
locating a person, designated as a scripting controller, at a first
location including a controller computer connected to a network;
providing software to run at least in part on the controller
computer at the first location, the software operating to
a) present a draft multimedia script via the network to at
least one of a plurality of contributors, at least one of the
contributors being located at a location remote from the first
location, the draft multimedia script including one or more
software based slides, at least one software based slide
containing at least one data source element to display
underlying data source material of the data source element at
least as part of at least one software based slide during
presenting the draft multimedia script,
b) display changes to the draft multimedia script,
proposed by any of the plurality of contributors, in real time to
all of the plurality of contributors and to the scripting controller,
c) accept input, in real time, received from any of the
plurality of contributors concerning a particular proposed
change, for display to all of the plurality of contributors, and
d) selectively revise the draft multimedia script under the
control of the scripting controller to include the particular
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Application 12/939,369
proposed change after the input concerning the particular
proposed change has been reviewed by at least some of the
plurality of contributors and the scripting controller to create a
revised multimedia script, and
using the revised multimedia script to organize the multimedia
presentation.
60. The method of claim 13 including accessing the
underlying data on-the-fly without opening another software
application that is associated with the underlying data.
Claim 60 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirements.
Claims \-A, 7, 9, 13-15, 21-35, 38-40, 42-A9, 51, 54, 60, and 61
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mattaway
(US 6,728,784 Bl; Apr. 27, 2004), Zhu (US 6,654,032 B2; Nov. 25, 2003)
Bretschneider (US 6,128,629; Oct. 3, 2000), and Atkinson (US 5,581,760;
Dec. 3, 1996).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Mattaway, Zhu, Bretschneider, Atkinson, and Adams (US 5,781,732;
July 14, 1998).
Claims 10 and 41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mattaway, Zhu, Bretschneider, Atkinson, and Allen
(US 5,473,744; Dec. 5, 1995).
Claims 16, 17, 36, and 50 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mattaway, Zhu, Bretschneider, Atkinson, and O’Brien
(US 6,351,776 Bl; Feb. 26, 2002).
Claims 18—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Mattaway, Zhu, Bretschneider, Atkinson, Camarda (Bill Camarda,
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Application 12/939,369
Special Edition Using Microsoft® Word 2000 (Safari Books Online
1999)).
Claims 52, 53, and 55—57 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mattaway, Zhu, Bretschneider, Atkinson, and Rutledge
(Patrice-Anne Rutledge & Tom Mucciolo, Special Edition Using
Microsoft® PowerPoint 2000® (Que Publishing 1999)).
Claims 58 and 59 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mattaway, Zhu, Bretschneider, Atkinson, and
Gudmundson (US 5,907,704; May 25, 1999).
ANALYSIS
§112 Rejection, First Paragraph
We are persuaded by Appellants’ arguments (App. Br. 6—9; see also
Reply Br. 2—3) that claim 60 is enabled by the Specification.
The Examiner concluded that “[t]he specification does not enable any
person skilled in the art to which it pertains, or with which it is most nearly
connected, to make the invention commensurate in scope with these claims.”
(Ans. 4.) In particular, the Examiner concluded that “the specification,
while being enabling for reading and displaying ‘certain files’ such as Word
files by converting them into a preferred format such as RTF which is
applicable only to data representing text (specification paragraph 0105),
does not reasonably provide enablement for reading and displaying non­
textual data” (id.) and “that [undue] experimentation is required to determine
these formats as well as to anticipate any future format” (id. at 5). Restated,
“[t]he Examiner disagrees that the specification supports reading and
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Application 12/939,369
displaying ‘any’ data format or a format that is not ‘a preferred format’ as
required by the specification without opening an application.” (Id. at 4.)
We do not agree with the Examiner’s reasoning. Claim 60 recites
“accessing the underlying data on-the-fly without opening another software
application that is associated with the underlying data.” Appellants’
Specification discloses the following:
The software will preferably be able to interface with a wide
variety of other software, e.g. word processors (MS Word,
WordPerfect, etc.), presentation software (Power Point, etc.),
databases (Oracle, Dbase, etc.), case management software
(Summation, etc.), video preparation and editing software
(e.g. QuickTime), image preparation and editing software
(e.g. Photoshop), and others. The software may convert certain
files into a preferred format (e.g. convert all Word files into RTF
format) and save them in this preferred format. However, the
software will ideally also be able to read and display any format
on-the-fly.
(Spec. 1105 (emphasis added).)
As acknowledged by the Examiner, claim 60 is enabled “for reading
and displaying ‘certain files’ such as Word files by converting them into a
preferred format such as RTF.” (Ans. 4.) Although the Examiner provided
a statement that Appellants’ Specification “does not reasonably provide
enablement for reading and displaying non-textual data” (id.), the Examiner
has provided insufficient evidence that those skilled in the art would be
unable to make and use the invention with respect to non-textual data.
Moreover, although the Examiner stated “that [undue]
experimentation is required to determine these formats as well as to
anticipate any future format” (id. at 5), the conclusion of non-enablement is
not commensurate in scope with claim 60, because the claim does not recite
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reading “any data format” or displaying “any data format.” Claim 60 merely
requires accessing underlying data of any one format.
Accordingly, we do not sustain the rejection of dependent claim 60
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
§103 Rejection—Mattaway, Zhu, Bretschneider, and Atkinson
We are persuaded by Appellants’ arguments (App. Br. 10—14) that the
combination of Mattaway, Zhu, Bretschneider, and Atkinson would not have
rendered obvious independent claim 1, which includes the limitations “a
draft multimedia script. . . the draft multimedia script including one or more
software based slides” and “selectively revise the draft multimedia script
under the control of the scripting controller to include the particular
proposed change after the input concerning the particular proposed change
has been reviewed by at least some of the plurality of contributors and the
scripting controller to create a revised multimedia script.”
The Examiner found that the podium client of Mattaway corresponds
to the limitation “scripting controller” and that the whiteboard of Mattaway,
in which participants share objects, corresponds to the limitation
“multimedia script. . . multimedia script including one or more software
based slides.” (Final Act. 5.) The Examiner also found that the podium
process of Mattaway, in which participants share objects, and the off-line
Notebook document of Mattaway, which includes all shared objects,
correspond to the limitation “selectively revise the draft multimedia script
under the control of the scripting controller to include the particular
proposed change after the input concerning the particular proposed change
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has been reviewed by at least some of the plurality of contributors and the
scripting controller to create a revised multimedia script.” {Id. at 6.) We do
not agree with the Examiner’s findings.
Mattaway relates to a collaborative multimedia system, in particular,
“notebook processes operatively interconnected over a computer network to
a conference server, and, an optional podium process capable of controlling
the priority of communications within the conference.” (Abstract.) Figure 3
of Mattaway illustrates graphic user interface 300, including
whiteboard 302, which is a public window region, and notepad 304, which is
a private window region. (Col. 8,11. 30—35.) Mattaway explains that
collaborative multimedia (CM) system 200 provides for both meetings in
which “control is passed around amenably amongst the participants” and
classes “where a moderator, e.g. instructor or speaker using a Podium
client 240 controls who may take control of the class at any time.” (Col. 6,
11. 13—20.) In particular, Mattaway explains that “[i]n a meeting, users
contribute to the whiteboard 302 by copying files from their file system or
selected objects from their Private window into the whiteboard.” (Col. 8,
11. 42-45.) Similarly, Mattaway explains that “[njotebook and podium users
can copy, e.g. drag/drop files and objects into their workspaces, i.e., private
notes and public whiteboard from the file system or applications
respectively, copy objects between workspaces, transfer files to one or more
other participants and record and playback meetings and classes.” (Col. 6,
11. 42-47.) Furthermore, Mattaway explains that “[a] NoteBook document
can be saved to disk and reviewed off-line at a later time” and “may also be
printed and have new ‘sub-document’ objects inserted into it such as World-
Wide-Web pages and shared objects.” (Col. 12,11. 64—67.)
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Application 12/939,369
Although the Examiner cited whiteboard 320 of Mattaway, which can
also be saved for off-line viewing as a NoteBook document, the Examiner
has provided insufficient evidence that Mattaway teaches the limitation “a
draft multimedia script.” In particular, Mattaway permits participants to
“drag and drop” files and objects into shared whiteboard 302, thus,
providing for a conglomeration of such files and objects, rather a
“multimedia script. . . multimedia script including one or more software
based slides,” as claimed.
Moreover, even if we assume for the sake of argument the Examiner
is correct that Mattaway teaches the limitation “multimedia script,” the
Examiner has provided insufficient evidence to support a finding that
Mattaway teaches the limitation “selectively revise the draft multimedia
script under the control of the scripting controller.” In particular, for the
classroom embodiment of Mattaway, once the moderator of Mattaway
provides control of whiteboard 302 to a participant, Mattaway is silent as to
whether the moderator or other participants have the ability to review the file
or object that is shared in whiteboard 302. Similarly, for the meeting
embodiment of Mattaway, any user can copy files or objects to
whiteboard 302 and Mattaway is silent with respect to the ability of other
users to review.
Accordingly, we are persuaded by Appellants’ arguments that
“Mattaway requires no more than allowing a participant to view a document
with no capability for editing the underlying, original document” (App.
Br. 11) and “Mattaway states that application sharing takes place on the
whiteboard so that only the party in control may effect a change” (id.) which
“means that attendees other than the one in control cannot make a change on
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Application 12/939,369
the whiteboard” (id. at 12—13) and “[tjhere is no clarification, however, as to
what kinds of changes the one in control can actually make” (id. at 13).
Furthermore, the Examiner’s application of Zhu, Bretschneider, and
Atkinson does not cure the above-noted deficiencies of Mattaway.
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 2-4, 7, 9, 13, 14, 21-35, 38^10, 42-44,
46-49, 51, 54, and 60 depend from independent claim 1. We do not sustain
the rejection of claims 2-4, 7, 9, 13, 14, 21—35, 38-40, 42-44, 46-49, 51,
54, and 60 under 35 U.S.C. § 103(a) for the same reasons discussed with
respect to independent claim 1.
Independent claim 61 recite limitations similar to those discussed with
respect to independent claim 1. We do not sustain the rejection of claim 61
for the same reasons discussed with respect to claim 1.
Other § 103 Rejections
Claims 8, 10, 16—20, 36, 41, 50, 52, 53, and 55—59 depend from
claim 1. Adams, Allen, O’Brien, Camarda, Rutledge, and Gudmundson
were individually cited for teaching the additional features of claims 8, 10,
16—20, 36, 41, 50, 52, 53, and 55—59. (Final Act. 29—39.) However, the
Examiner’s application of Adams, Allen, O’Brien, Camarda, Rutledge, and
Gudmundson does not cure the above noted deficiencies of Mattaway, Zhu,
Bretschneider, and Atkinson.
Accordingly, we do not sustain the rejections of dependent claims 8,
10, 16-20, 36, 41, 50, 52, 53, and 55-59 under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s decision rejecting claims 1—4, 7—10, 13—36, and 38—
61 is reversed.
REVERSED
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