Ex Parte Mordecai et al

Patent Trial and Appeal Board

Jan 28, 2014

11367845 (P.T.A.B. Jan. 28, 2014)

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.
11/367,845 03/02/2006 Nicole Y. Mordecai SUN07-64(050668) 5233
51344 7590 01/28/2014
BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
KATSIKIS, KOSTAS J
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
01/28/2014 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 NICOLE Y. MORDECAI,
MICHAEL WESSLER, JONATHAN H. KAPLAN,
JOSEPH E. PROVINO, and KARL HABERL
____________

Appeal 2011-013082
Application 11/367,845
Technology Center 2400
____________

Before BRUCE R. WINSOR, JUSTIN BUSCH, and
CATHERINE SHIANG, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-8, 10-15, and 17-20, which constitute all the claims pending in
this application. Claims 2, 9, and 16 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest identified by Appellants is Oracle America, Inc.
App. Br. 1.
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STATEMENT OF THE CASE
Appellants’ disclosure relates to “collaboration software systems for
use on a digital network and, more specifically, to voice communications on
such systems.” Spec. ¶ 0001. Claim 1, which is illustrative, reads as
follows:
1. A network collaboration system for facilitating
interaction between network clients having access to a digital
network, the system comprising:
a communications tool that accepts audio inputs from
network clients, and provides audio outputs to network clients
that comprise a mix of said audio inputs;
a network interface that allows network clients to
participate in a collaboration in which certain collaborating
clients are connected using the communications tool such that
audio inputs from the collaborating clients are mixed together
and delivered to the collaborating clients as audio outputs;
a grouping feature by which network clients that are
participants in a collaboration are segregated into a plurality of
groups, a first group of the participants being in audio
communication with each other in a primary audio forum, and a
second group of participants being excluded from the primary
audio forum such that the communications tool ensures that
audio outputs from network clients of the first group of
participants are not sent to any network clients of the second
group of participants; and
an access tool by which at least one participant of the
first group can identify the participants in each of the first and
second groups and that modifies a state of the communications
tool to selectively grant access to any designated participants of
the second group that allows the designated participants to join
the first group, wherein each of the participants has a set of
access privileges that establishes that participant’s ability to
join the first group.
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Claims 1, 3-8, 10-15, and 17-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jain (US 2007/0067387 A1; Mar. 22, 2007)
and Eshkoli (US 2006/0164508 A1; July 27, 2006). Ans. 4-10.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Feb. 4, 2011; “Reply Br.” filed June 13, 2011) and the Answer
(“Ans.” mailed Apr. 11, 2011) for the respective positions of Appellants and
the Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

ISSUES
Appellants’ arguments (App. Br. 4-6; Reply Br. 2) are directed to
claim 1, asserting the patentability of claims 3-8, 10-15, and 17-20 by
reference to the arguments made for claim 1 (see App. Br. 6). Therefore, we
select claim 1 as the representative claim, pursuant to our authority under
37 C.F.R. § 41.37(c)(1)(vii). The issues presented by Appellants’
contentions are as follows:
Has the Examiner provided “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness,” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted), of
claim 1 over the combination of Jain and Eshkoli?
Would the combination of Jain and Eshkoli articulated by the
Examiner in concluding claim 1 is obvious alter Jan’s principle of operation
and render Jain unsuitable for its intended purpose?
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ANALYSIS
The Examiner finds as follows:
At the time of the invention, it would have been obvious
to one of ordinary skill in the art, having the teachings of Jain
and Eshkoli before him or her, to modify the conference server
of Jain, to include access privileges enabling various modes of
operation such as that of Eshkoli, with reasonable expectation
that this would result in a system that enabled an administrator
to predefine the access privileges of the participants of an
electronic conference, granting such eligible participants the
ability to select a mode of operation for participating in the
conference, thereby resulting in a more versatile, user friendly,
and convenient mode of communication that provided an
individual the ability to engage in multiple conferences at a
time.
Ans. 6. Appellants contend the Examiner’s finding “cannot satisfy the
Examiner’s burden to provide ‘articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” App. Br. 5
(citing MPEP § 2142). We are unpersuaded of error.
Appellants assert
[t]he Examiner has failed to provide any explanation as to why
abstract notions of versatility, user friendliness, and
convenience would have prompted one of ordinary skill to
modify Jain in the manner suggested by the Examiner given the
teachings of Eshkoli. Rather, the Examiner merely concludes,
without support, that such a combination is “more versatile,
user friendly, and convenient.”
Id. Although neither Eshkoli nor Jain uses the words used by the Examiner,
the whole tenor of Eshkoli is directed to versatility, user friendliness, and
convenience. See, e.g., Eshkoli, ¶¶ 0004, 0011 (cited at Ans. 20).
Appellants further assert that “[p]roviding ‘an individual the ability to
engage in multiple conferences at a time,’ from a practical standpoint, does
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not make any sense.” App. Br. 5 (citation omitted). The assertion is
unpersuasive. The Examiner points out the following:
Eshkoli discloses in paragraph [0011] that the association of
videoconferencing services can be used, for example, in an
educational setting, in which students are divided into two or
more conferences and a lecturer (the traveler) is permitted move
from one or more videoconferences to the other. Another
exemplary setting in which the association can be used is a
business setting, in which a manager may travel from one
meeting room (videoconference) to the other in an
organization. . . . In another embodiment, the MCU
[(multipoint control unit)] may be configured to allow one or
more peers of an organization to travel between meetings and to
join any meeting among the organization.
Ans. 20. Thus, Eshkoli teaches several practical examples of allowing an
individual to participate in more than one conference at a time.
Contrary to Appellants’ assertion that combining Eshkoli with Jain in
the manner described by the Examiner would not improve Jain (App. Br. 5),
we agree with the Examiner (see e.g., Ans. 20-21) that one of ordinary skill
in the art would have recognized that the versatility, user friendliness, and
convenience provided by allowing a video conference participant to choose
between multiple associated video-conferences would have improved Jain’s
conferencing system in the same way it improves Eshkoli’s conferencing
system. See KSR, 550 U.S. at 417 (“[I]f 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.”).
The Examiner finds that improving Jain with Eshkoli’s teachings
would have been within the skill of the ordinarily skilled person. Ans. 6.
Appellants do not provide any evidence or argument to demonstrate that the
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ordinarily skilled person would have been unable to implement the
improvement beyond a general statement that “that the mere identification of
claim elements in references does not, in itself, also provide the teaching as
to why one of ordinary skill would have found it obvious to combine those
elements in the manner claimed” (App. Br. 6).
Appellants have failed to persuade us that the Examiner has only
provided “mere conclusory statements,” KSR, 550 U.S. at 418, based on “the
mere identification of claim elements in references” (App. Br. 6). Rather,
we find that the Examiner has provided “some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness,”
KSR, 550 U.S. at 418, and that the reasoning and underpinnings are
supported by the cited references, and in particular by Eshkoli.
Appellants contend, for the first time in the Reply Brief, that the
combination of Jain and Eshkoli articulated by the Examiner “would
impermissibly alter Jain’s principle of operation and render Jain
unsatisfactory for its intended purpose.” Reply Br. 2 (citing MPEP
§ 2143.01 V-VI). Arguments raised for the first time in the Reply Brief are
typically waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”).
Nonetheless, Appellants’ contention is unpersuasive. Appellants
assert that control by the moderator over who enters and leaves a main
conference room is a key feature of Jain. Reply Br. 2. Appellants argue as
follows:
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[O]ne of ordinary skill would not find reason to strip Jain’s
moderator of this control [over which participants may enter the
main conference room] in favor of allowing participants to
decide whether to enter the main conference room as suggested
by the Examiner. Such participant control would interfere with
the moderator’s ability to efficiently manage the conference: a
moderator, using the system proposed by the Examiner, would
have to ask participants to leave or enter the main conference
room instead of just being able to make them leave or enter.
Reply Br. 2 (citation omitted). Accepting arguendo Appellants’
characterization of Jain’s principle of operation and purpose, Appellants do
not persuasively explain why the teachings of Eshkoli are incompatible with
Jain’s alleged “key feature.” We find the combination would not “strip
Jain’s moderator of . . . control” (Reply Br. 2). For example, Eshkoli
teaches that “the moderator can determine whether a particular participant
will have the ability to request a sub-conference (using their respective
control devices 112) during the videoconference or whether a particular
participant will have the ability to select between two or more associated
videoconferences.” Eshkoli, ¶ 0031.
Appellants have failed to persuade us of error in the rejection of claim
1. Accordingly, we sustain the rejection of claim 1, and claims 3-8, 10-15,
and 17-20, which fall with claim 1.

DECISION
The decision of the Examiner to reject claims 1, 3-8, 10-15, and 17-20
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED

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