Ex Parte Maeng

Board of Patent Appeals and Interferences

Mar 30, 2007

09627731 (B.P.A.I. Mar. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOON MAENG
____________

Appeal 2007-0524
Application 09/627,731
Technology Center 2100
____________

Decided: March 30, 2007
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Before JAMES D. THOMAS, JOSEPH F. RUGGIERO
and JAY P. LUCAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant has appealed to the Board
from the Examiner’s Final Rejection of claims 1 through 26.
As representative of the disclosed and claimed invention,
representative independent claim 1 is reproduced below:
1. A method of displaying an electronic file to a primary user having
a primary workstation, said primary workstation coupled to a global
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Application 09/627,731

computer network, and at least one secondary viewer at a remote location,
comprising:

accessing a first file and displaying said first file on said primary
workstation;

displaying said first file at said remote location on a secondary
workstation, said secondary workstation coupled to said global computer
network;

accessing a second file, said second file comprising information
relating to said first file, and

displaying said second file only on said primary workstations as an
overlay to said first file, wherein said second file is not viewable by said at
least one secondary viewer

The following references are relied on by the Examiner:
Ludwig US 6,343,314 B1 Jan. 29, 2002
(Filed April 28, 1997)
Kumar US 6,342,906 B1 Jan. 29, 2002
(Filed February 2, 1999)

Claims 1, 2, 4, 10, 11 through 16, 19 through 21, 25 and 26 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Ludwig. The
remaining claims on appeal stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness as to claims 3, 5 through 9, 17, 18 and 22 through
24, the Examiner relies upon Ludwig in view of Kumar.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the Brief and Reply Brief for the Appellant’s positions,
and to the Answer for the Examiner’s positions.

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OPINION
Generally for the reasons set forth by the Examiner in the Answer, we
sustain both rejections of the claims on appeal with additional amplifying
reasoning set forth here.
At the outset, we note that each of independent claims 1, 11 and 19 in
part recites that a respective file or image is said to be an “overlay to” an
existing first file. Independent claim 25 does not at all recite this feature,
notwithstanding Appellant’s arguments in the principal Brief on appeal that
each of independent claims 1, 11, 19 and 25 have this feature. The “second
file” in representative independent claim 1 on appeal is recited to be merely
“related to” a first file. Based upon our review of the disclosed invention,
the emphasis is that the term “overlay to” simply means that the two images
are combined on the same surface, such as to show both images on the
surface. The words “overlay to” are not coextensive with an overlay being
“on” or “over” or “visible thru” as expressed at the bottom of page 6 of the
principal Brief on appeal. As discussed at Specification page 6, lines 7
through 10, the term “overlay to” contemplates separate windows on the
same screen or a situation where a second displayed image may be presented
on a screen in side-by-side manner with respect to a first displayed image.
With these perspectives in mind, pertinent figures place the invention
in a proper context in Ludwig. These include figures 1, 2A and 2B, 3 (the
collaborative multimedia workstation (CMW) integrated with standard
multitasking operating system hardware), the showing in figures 20, 21 and
28 through 31 in addition to figures 35 through 42. It is noted that the
discussion in the paragraph bridging columns 14 and 15 illustrates prior art
workstation types known in the art.
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The Examiner’s reasons of unpatentability urging anticipation of these
independent claims, the only claims argued in the first stated rejection, are
based upon the expert system discussed beginning at the middle of column
35 through the end of the patent. Our first and most obvious impression of
figure 35 is the recognition that a standard desktop 206 is presented for the
user in addition to the collaboration capabilities shown in the remaining
separate windows of this figure. Since element 206 is illustrated as a
standard desktop, it is clear to us that it is shown in a side-by-side manner in
a separate window for the desktop in addition to the collaboration
capabilities including those relied upon by the Examiner in figures 36 and
37. See at least column 36, lines 30-34. Thus, the broadly recited “overlay
to” feature is clearly illustrated in these figures in addition to the capability
of only the initiator of the collaboration session having independent
capability within his own desktop 206 to display in side-by-side manner
material from his own desktop or records available only to him or her from
the desktop and not available to any person to which the initiator
collaborates.
The discussion beginning at the bottom of column 35 illustrates as
well that the system has the capability of processing private mail and
multimedia mail among the collaboration participants. The discussion at
column 36 illustrates that some parties may be permitted to see certain
participants and not others. Selective regions or portions of a given screen
are also discussed here. Of particular interest is the capability of the expert
to secretly view only the client’s profile on the expert’s screen and not the
field representative’s screen where the actual client is present in the figures
at lines 59-60.
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Thus, there is ample basis in the disclosure of Ludwig for the artisan
to conclude the correctness of the Examiner’s views expressed in the
Answer that the combined image file 210 in the share window 211 in figure
36 may be overlayed with the expert’s new graphical image 221 illustrated
in figure 37. It so happens that this figure shows that the overlay of the
image 221 is coextensive with the image of element 210 in figure 36, but
such is not required because the combination of the bitmaps shown in figure
28 does not require the overlay to be the same size as the image under it.
As noted earlier, the major emphasis of Appellant’s arguments with
respect to the independent claims in the principal Brief is the argument at the
bottom of page 6 that the reference doesn’t disclose any display in which an
image is “visible through” another image when the second image is
“overlaid to” it. On the other hand, the Reply Brief expands upon the argued
features for the independent claims by arguing the capability, as in
independent claim 1, that a second file is not viewable by a secondary
viewer but only by the primary workstation viewer. Even though such an
approach is highly disfavored because it illustrates a situation where the
Examiner has not responded to the new argument, the reference does teach
the capability anyway as we have outlined earlier.
We are not persuaded by Appellant’s arguments with respect to the
rejection of the noted dependent claims in the second stated rejection under
35 U.S.C. § 103. The manner in which the arguments are presented as to
some of these dependent claims beginning at page 7 of the Brief merely
repeats the same argument format for each of them. The Examiner has
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shown the correspondence at pages 7 through 9 of the Answer in the
Statement of the Rejection portion with respect to these claims a correlation
of the respective teachings of Ludwig and Kumar to meet the claimed
features. Appellant’s arguments have not disputed what the Examiner has
relied upon in Kumar to add to the teachings of Ludwig. The nature of
collaboration tools as in Ludwig and Kumar allows separate, selectable
accessibility to common files as recited in dependent claim 3. At least with
respect to the standard desktop teachings in Ludwig we noted earlier, those
are clearly accessible only to the user of an individual workstation based
upon a code in the form of a name and a password as in dependent claim 5.
A plurality of memories between the workstations taught to be in the prior
art at columns 14 and 15 of Ludwig and the file system shown in Figures 30
through 33 of Ludwig include the capability even of individual disks having
a plurality of sectors from which different files may be stored as in
dependent claim 6. The videoconferencing system of dependent claim 8 has
already been admitted by Appellant to be in the prior art at Specification
pages 4 and 5 in addition to the showings in Ludwig. The use of the device
recited in dependent claim 9 has been illustrated by the Examiner in the
example of the expert in figure 35 of Ludwig in addition to the teachings in
Kumar as to a common annotation file in claim 18. An accessibility of more
than one of a plurality of remote users includes all of them, which feature is
clearly within contemplation of Ludwig alone.
As to the second stated rejection, we agree with the Examiner’s
positions set forth at pages 12 and 13 of the Answer regarding the
combinability issue of Ludwig and Kumar. Kumar clearly would have been
appreciated by the artisan as expanding on the ability to share common
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annotation workspace teachings of Kumar with different modes of operation
and accessibility. Beginning at line 64 of column 4 of Kumar, there is an
explicit teaching of the ability to combine the teachings of this reference
with any other collaboration system, such as Ludwig’s.
In view of the foregoing, the decision of the Examiner rejecting
various claims under 35 U.S.C. § 102 and § 103 is affirmed. Accordingly,
the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR §1.136(a). See 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED

PGC

Oblon, Spivak, McClelland
Maier & Neustadt, P.C.
1940 Duke Street
Alexandria, VA 22314

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