Ex Parte Moran

Board of Patent Appeals and Interferences

Jun 17, 2009

09585669 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte THOMAS MORAN
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Appeal 2009-000,986
Application 09/585,669
Technology Center 2400
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Decided:1 June 17, 2009
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Before ROBERT E. NAPPI, MARC S. HOFF and
CARLA M. KRIVAK, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000,986
Application 09/585,669

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 35-65.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a conference system wherein a user is able
to view, select, and invite participants to participate in a subconference
through the use of a graphical interface. See Spec. 1-14. Claim 35 is
representative of the invention and reproduced below:
35. A method of conferencing comprising the steps of:
forming a main conference between a plurality of users,
presenting at least one of said users in the main conference
with a graphical list of the main conference participants,
providing said user with an interface to interact with said
graphical list of main conference participants, such that said
user has an option to request a subconference with a subset of
other users by selecting subconference participants from said
graphical list using said interface,
forming a subconference between said user and the subset
of other users,
maintaining private from the main conference at least some
communication between the subset of users in the
subconference during the subsistence of the subconference, and
presenting to said user a graphical list of the subset of users
in the subconference, when the subconference is in progress.

2 Appellant cancelled claims 2, 5-6, 21-23, 28, and 31 in an Amendment
filed 6 January 2004. Appellant cancelled claim 4 in an Amendment filed
16 November 2004. Appellant cancelled claims 1, 3, 7-20, 24-27, 29-30,
and 32-24 and added claims 35-65 in an Amendment filed 9 August 2005.
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REFERENCES
Theimer US 5,812,865 Sep. 22, 1998

Beyda US 6,404,873 B1 Jun. 11, 2002
(filed Dec. 1, 1998)

Hamilton US 6,757,259 B1 Jun. 29, 2004
(filed Aug. 12, 1999)

REJECTIONS AT ISSUE
The Examiner rejected claims 35-51, 58, and 60-65 under 35 U.S.C.
§ 103(a) as being unpatentable over Beyda. Ans. 3-10.
The Examiner rejected claims 52-55, 57, and 59 under 35 U.S.C.
§ 103(a) as being unpatentable over Beyda in view of Hamilton. Ans. 10-
11.
The Examiner rejected claim 56 under 35 U.S.C. § 103(a) as being
unpatentable over Beyda in view of Hamilton and Theimer. Ans. 12.
ISSUES
Rejection of claims 35-51, 58, and 60-65 under 35 U.S.C. § 103(a) as being
unpatentable over Beyda

Claims 35, 51, 60, and 62
Appellant argues on pages 11-14 of the Appeal Brief and pages 2-3 of
the Reply Brief that the Examiner’s rejection of claims 35, 51, 60, and 62 is
in error. Appellant argues that Beyda does not teach “presenting a list of
main conference participants to one of the users in the main conference.”
App. Br. 12. Appellant also argues that Beyda does not teach using an
interface to select a subconference participant. App. Br. 14. Finally,
Appellant argues that Beyda does not teach presenting a list of
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subconference participants when the subconference is in progress. App. Br.
15. Thus, with respect to claims 35, 51, 60, and 62 Appellant’s contention
presents us with three issues. (1) Has Appellant shown that the Examiner
erred in finding that Beyda teaches presenting a list of main conference
participants to one of the users in the main conference? (2) Has Appellant
shown that the Examiner erred in finding that Beyda teaches using an
interface to select a subconference participant? (3) Has Appellant shown
that the Examiner erred in finding that Beyda teaches presenting a list of
subconference participants when the subconference is in progress?
Claims 37-41, 43-50, 61, and 63-65
Appellant does not specifically address the rejection of claims 37-41,
43-50, 61, or 63-65, which are subject to the same rejection as independent
claims 35, 60, and 62, which are addressed in the Appeal Brief. Therefore,
we select claims 35, 60, and 62 to be representative of claims 37-41, 43-50,
61, and 63-65, which depend upon claims 35, 60, and 62. Thus, Appellant’s
contentions with respect to the rejections of claims 37-41, 43-50, 61, and 63-
65 present us with the same issues as discussed above with respect to the
rejection of claims 35, 60, and 62.
Claim 36
Appellant argues on page 16 of the Appeal Brief that the Examiner’s
rejection of claim 36 is in error. Appellant argues that Beyda does not teach
a subconference wherein the participants are entirely isolated from
participating in the main conference. Thus, with respect to claim 36,
Appellant’s contention presents the issue: has Appellant shown that the
Examiner erred in finding that Beyda teaches a subconference wherein the
users are entirely isolated from participation in the main conference?
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Claims 42 and 58
Appellant argues on page 16 of the Appeal Brief that the Examiner’s
rejection of claims 42 and 58 is in error. Appellant argues that Beyda does
not teach providing a subconference list to the users in the main conference
during the subsistence of the subconference. Thus, with respect to claims 42
and 58, Appellant’s contention presents the issue: has Appellant shown that
the Examiner erred in finding that Beyda teaches providing a subconference
list to the users in the main conference during the subsistence of the
subconference?
Rejection of claims 52-55, 57, and 59 under 35 U.S.C. § 103(a) as being
unpatentable over Beyda in view of Hamilton

Claims 52-55, 57, and 59
Appellant argues on page 17 of the Appeal Brief that claims 52-55,
57, and 59 are allowable based upon their dependency on claim 51. Thus,
Appellant’s arguments with respect to the Examiner’s rejection of claims 52-
55, 57, and 59 present the same issue as claim 51.

Rejection of claim 56 under 35 U.S.C. § 103(a) as being unpatentable over
Beyda in view of Hamilton and Mier

Claim 56
Appellant argues on page 17 of the Appeal Brief that claim 56 is allowable
based upon its dependency on claim 51. Thus, Appellant’s arguments with
respect to the Examiner’s rejection of claim 56 present the same issue as
claim 51.
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FINDINGS OF FACT (FF)
Beyda
1. Beyda teaches a telecommunications system and method of
establishing and managing a main conference call and
subconference call. Col. 1, ll. 5-8.
2. Telephone operators set up and control conference calls by
selectively adding and dropping individuals from a conference call.
Visual displays are maintained by an operator that lists a name and
telephone number for each of the conference call participants. Col.
1, ll. 32-36.
3. Beyda also discloses a conference management system in which a
party from one conference combines with a second conference that
is already in progress. Col. 1, ll. 47-51.
4. The coordinating party has the ability to connect and disconnect
parties from the first conference with the second conference and
then subsequently reconnect the parties, thereby creating
subconferences. Col. 1, ll. 51-59.
5. In order to assist with the connection and disconnection of parties,
the coordinator’s computer terminal displays names and telephone
numbers of all the parties involved in the conference. Col. 1, l. 66
through col. 2, l. 2.
6. Beyda teaches that in the prior art to establish subconferences,
parties wishing to be involved in the subconference must first be
disconnected from the main conference call. When this occurs,
other coordinators are able to detect that parties have been
dropped. Col. 2, ll. 1-9.
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7. To overcome the deficiency found in the prior art, Beyda also
teaches the ability to listen to the main conference while
participating in a subconference and the ability to rejoin the main
conference. Col. 2, ll. 9-13 and col. 7, ll. 1-5.

PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted; emphasis in
original).
On the issue of obviousness, the Supreme Court has stated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
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use of prior art elements according to their established
functions.

Id. at 417. “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” Id. at 419-420.
It is well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed in the prior art, the burden of
proof is shifted to applicant to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed to the claimed
product. In re Spada, 911 F.2d 705, 708-709 (Fed. Cir. 1990); In re Best,
562 F.2d 1252, 1255 (CCPA 1977). “Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima face obviousness’ under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.” Best, 562 F.2d at 1255 (CCPA
1977).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant has the burden, on appeal to the Board, to demonstrate error in the
Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).

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ANALYSIS
Rejection of claims 35-51, 58, and 60-65 under 35 U.S.C. § 103(a) as being
unpatentable over Beyda

Claims 35, 51, 60, and 62
Appellant’s contentions have not persuaded us that the Examiner’s
rejection of claims 35, 51, 60, and 62 is in error. Independent claim 35
recites “presenting at least one of said users in the main conference with a
graphical list of the main conference participants, providing said user with
an interface to interact with said graphical list of main conference
participants, such that said user has an option to request a subconference
with a subset of other users by selecting subconference participants from
said graphical list using said interface,” and “presenting to said user a
graphical list of the subset of users in the subconference, when the
subconference is in progress.” Appellant’s Specification does not
specifically define the term “user.” Therefore, we find the term “user” to be
any person who accesses or uses the conferencing system. Thus, the scope
of claim 35 includes a telephone operator or any party to the conference
system. In addition, Appellant’s Specification does not specifically define
the term “graphical list.” Therefore, we find the term “graphical list” to be a
visual list of participants involved in a conference call, whether it is the main
conference call or a subconference call. Thus, the scope of the claim
includes a visual display. Independent claims 51, 60, and 62 recite similar
limitations.
First, Appellant argues that it is not inherent that Beyda teaches
presenting a graphical list of participants to one of the users in the main
conference because it is possible to establish a conference without a
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graphical interface. App. Br. 12; Reply Br. 2. While we agree with
Appellant’s reasoning, we are not persuaded of Examiner error, as we find
that the use of graphical lists is disclosed in Beyda.
Beyda teaches a telecommunications system and method of
establishing and managing a main conference call and subconference calls.
FF 1. Telephone operators can set up and control conference calls by
selectively adding and dropping individuals from a conference call. FF 2.
In order to do this, a visual display is maintained by the operator that lists a
name and telephone number for each of the individuals involved in the
conference call. FF 2. The operator is considered to be a user of the system.
Since the operator maintains a visual display of individuals in the conference
call, Beyda does teach presenting a graphical list of the main conference
participants to at least one of the users in the main conference.
Second, Appellant argues that Beyda does not teach the use of a
graphical list to select subconference participants because sending a request
from one terminal to another does not require a user to select a participant
from a graphical list. App. Br. 14; Reply Br. 3-4. However, Beyda teaches
a system in which a party from one conference combines with a second
conference. FF 3. The coordinating party has the ability to connect and
disconnect parties from the first conference with the second conference and
then subsequently reconnect the parties. FF 4. The act of connecting and
disconnecting parties from the conference to a separate conference
constitutes the selection of the participants for a subconference. FF 4. This
is accomplished with the help of the coordinator’s computer terminal which
displays names and telephone numbers of all the parties involved in the
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conference. FF 5. Thus, Beyda does teach the use of a graphical list to
select subconference participants.
Third, Appellant argues that Beyda does not teach presenting to a user
a graphical list of the subset of users in the subconference when the
subconference is in progress. App. Br. 15-16; Reply Br. 4. However, as
discussed above, the coordinator of the combined conference call, i.e., the
subconference, has a computer terminal display that lists the names and
telephone numbers of all parties involved in the subconference. FF 5. We
find this to be sufficient to meet the claim limitation.
Thus, Appellant’s arguments have not persuaded us of error in the
Examiner’s finding that Beyda teaches presenting a list of main conference
participants to one of the users in the main conference, using an interface to
select a subconference participant, and presenting a list of subconference
participants when the subconference is in progress as claimed in independent
claims 51, 60, and 62. Accordingly, we sustain the Examiner’s rejection of
these claims.
Claims 37-41, 43-50, 61, and 63-65
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 37-41, 43-50, 61, and 63-65. Claims 37-41
and 43-50 are dependent upon claim 35; claim 61 is dependent upon claim
60; and claims 63-65 are dependent upon claim 62. Appellant’s arguments
present the same issues discussed with respect to claims 35, 60, and 62.
Therefore, we sustain the Examiner’s rejection of claims 37-41, 43-50, 61,
and 63-65 for the reasons discussed supra with respect to claims 35, 60, and
62.
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Claim 36
Appellant’s argument has not persuaded us that the Examiner erred in
rejecting claim 36. Claim 36 recites “wherein those users in the
subconference are entirely isolated from participation in the main conference
during the subsistence of the subconference.” Appellant contends that
Beyda does not teach this claim limitation because Beyda discloses a
situation wherein participants can monitor the voice data of the main
conference. App. Br. 16. However, Beyda clearly indicates that the purpose
of allowing participants in a subconference to monitor the main conference
is to overcome a deficiency found in the prior art. FF 7. Beyda discloses
that it was known that parties to subconference calls were disconnected from
the main conference call in order to establish a subconference call. FF 6.
This indicates that participants to a subconference call were indeed
completely isolated from the main conference call. Thus, we sustain the
Examiner’s rejection of claim 36.
Claims 42 and 58
Appellant’s argument has persuaded us of error in the Examiner’s
rejection of claims 42 and 58. Claim 42 recites “wherein the users in the
main conference are presented with said subconference list during the
subsistence of the subconference.” Claim 58 recites a similar limitation.
Appellant argues that Beyda does not present a list of the subconference
participants to the main conference participants. App. Br. 16. We agree
with Appellant.
Beyda discloses providing a list of participants to the coordinator of
each conference call. FF 5. In addition, when a party is dropped from a call,
other coordinators are able to detect that participants are dropped. FF 6.
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However, there is no evidence to suggest, nor has the Examiner cited to
particular passages, that Beyda teaches providing a list of subconference
participants to main conference participants. Therefore, we will not sustain
the Examiner’s rejection of claims 42 and 58.

Rejection of claims 52-55, 57, and 59 under 35 U.S.C. § 103(a) as being
unpatentable over Beyda in view of Hamilton

Claims 52-55, 57, and 59
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 52-55, 57, and 59. Claims 52-55, 57, and 59
are dependent upon claim 51, whose rejection we affirm supra. Therefore,
we sustain the Examiner’s rejection of claims 52-55, 57, and 59 for the
reasons discussed supra with respect to claim 51.

Rejection of claim 56 under 35 U.S.C. § 103(a) as being unpatentable over
Beyda in view of Hamilton and Mier

Claim 56
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 56. Claim 56 is dependent upon claim 51.
Appellant’s arguments present the same issues discussed with respect to
claim 51. Therefore, we sustain the Examiner’s rejection of claim 56 for the
reasons discussed supra with respect to claim 51.

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CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in finding that
Beyda teaches presenting a list of main conference participants to one of the
users in the main conference.
Appellant has not shown that the Examiner erred in finding that
Beyda teaches using an interface to select a subconference participant.
Appellant has not shown that the Examiner erred in finding that
Beyda teaches presenting a list of subconference participants when the
subconference is in progress.
Appellant has shown that the Examiner erred in finding that Beyda
teaches providing a subconference list to the users in the main conference
during the subsistence of the subconference.

SUMMARY
The Examiner’s rejection of claims 35-41, 43-57, and 59-65 is
affirmed.
The Examiner’s rejection of claims 42 and 58 is reversed.
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

ELD

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